r 


THE  LIBRARY 

OF 

THE  UNIVERSITY 
OF  CALIFORNIA 

LOS  ANGELES 

SCHOOL  OF  LAW 


TRADE    MARK    LAWS 
OF  THE  WORLD 

AND 

UNFAIR   TRADE 


BY 

B.    SINGER 

Ml 


National  Life  Building,  CHICAGO 

30  Church  Street,   NEW   YORK 

Victor  Building,  WASHINGTON,  D.  C. 
17  Neuenburger  Strasse,  BERLIN 


CHICAGO,   FEBRUARY,    1913 


COPYRIGHT,  1913 

BY 

B.  SINGER 


<^ 
WO 


PREFACE 


FIFTEEN  years  ago  I  published  a  book  on  foreign  trade 
marks  for  the  convenience  of  attorneys,  which,  in  con- 
sequence of  the  tremendous  growth  and  expansion  of 
international  commerce  and  the  changes  in  the  laws  and 
practice,  has  become  obsolete.     In  my  recent  publication,  "Patent 
and  Trade  Mark  Laws  of  the  World,"  I  endeavored  in  a  brief 
manner  to  provide  an  epitome  of  the  trade  mark  laws,  but  I  found 
it  impossible  in  a  work  of  that  character  to  devote  the  space  to  it 
which  its  importance  demanded,  hence  this  publication,  for  which 
I  have  been  collecting  data  during  the  last  quarter  of  a  century. 

The  laws  are  quoted  direct  from  the  statute  books,  rules  of  prac- 
tice, decisions  of  the  courts,  etc. 

I  desire  to  acknowledge  my  indebtedness  to  the  following  publi- 
cations for  valuable  suggestions,  viz :  "Bulletin  of  the  U.  S.  Trade 
Mark  Association"  (Arthur  W.  Barber,  Editor),  "La  Propriete 
Industrielle"  and  "Blatt  fur  Patent  Muster  und  Zeichenwesen." 

The  keen  rivalry  among  nations  of  the  world's  markets  lends 
additional  importance  to  the  registry  of  trade  marks  on  popular 
and  standard  classes  of  merchandise. 

A  registered  mark  not  only  protects  the  owner  against  imitation 
wares,  but  gives  character  and  a  guarantee  of  quality  to  the  mer- 
chandise bearing  the  mark.  It  is  a  token  of  respectability  and 
bears  upon  its  face  the  fact  that  the  owner  desires  to  convey  to 
the  consumer  a  guaranty  as  to  the  uniformity  and  quality  of  the 
product.  "A  trade  mark  is  a  distinctive  mark,  through  which  the 
products  of  particular  manufacturers,  or  the  commodities  of  par- 
ticular merchants  may  be  distinguished  from  those  of  others." 
(Standard  Paint  Co.  vs.  Trinidjtd  Asphalt  Mfg.  Co.) 

5 


6  PREFACE 

A  trade  mark  when  once  established  is  a  business  getter;  its 
object  is  to  hold  the  customer  when  once  obtained,  therefore  its 
protected  name  is  of  prime  importance. 

I  have  endeavored  to  make  this  work  as  complete  as  possible 
with  the  means  at  my  command,  for  the  use  and  assistance  of 
attorneys  as  well  as  for  the  information  valuable  to  trade  mark 
owners,  manufacturers  and  exporters. 

Equal  consideration  has  been  given  to  each  country,  regardless 
of  its  importance  in  international  trade. 

I  submit  this  work  to  the  favorable  consideration  of  my  readers. 

B.  SINGER. 
CHICAGO. 
NEW  YORK. 
WASHINGTON. 
BERLIN. 
February,  1913. 


ARGENTINE  REPUBLIC 

The  Argentine  Republic  is  bounded  on  the  north  by  Bolivia, 
on  the  east  by  Brazil  and  Uruguay  and  the  Atlantic  Ocean,  on 
the  south  by  the  Atlantic  Ocean  and  Chile  and  on  the  west  by 
the  Andes,  which  separates  it  from  Chile.  It  extends  from  north 
and  south  a  distance  of  2,400  miles,  and  its  average  breadth  is 
nearly  700  miles.  It  consists  of  14  provinces,  and,  including  the 
10  adjoining  territories,  contains  about  1,135,840  English  square 
miles,  with  a  population  of  about  7,250,000. 

There  are  15,210  miles  of  railway  in  working  order. 

Principal  exports  are :  Dry  and  salted  ox  hides,  dry  and  salted 
horse  hides,  sheep  skins,  tallow,  wool,  frozen  wethers,  wheat, 
maize,  linseed,  jerked  beef,  horns,  etc.,  quebracho,  tobacco,  sugar, 
butter  (frozen),  etc. 

Cattle  and  sheep  breeding  constitutes  an  important  industry, 
the  estimated  stock  of  horned  cattle  being  30,000,000,  and  sheep 
90,000,000. 

The  chief  articles  of  import  are :  Cotton  goods,  woolen  goods, 
ready-made  clothing,  drugs  and  chemicals,  pine  lumber,  wire  for 
fencing,  harvesting  and  other  agricultural  machinery,  building 
material,  printing  paper,  silk  goods,  pottery,  earthenware,  tobacco 
and  liquors. 

MONEY,  WEIGHTS  AND  MEASURES — The  customs  duties  are  lev- 
ied in  the  Argentine  Republic  in  specie.  The  monetary  unit  is 
the  peso=100  centavos=about  4s.  or  $1.00.  For  weights  and 
measures  the  metrical  system  has  been  adopted. 


TRADE  MARK  LAW  OF  NOVEMBER  23,  1900 

Term. 

Ten  years ;  renewable  indefinitely  in  like  terms.  If  renewal  of 
the  registration  be  not  effected  at  the  expiration  of  ten  years,  the 
trade  mark  will  lapse  or  may  become  the  property  of  the  first 
applicant  for  registration.  (Ch.  Lorilleux  y  Cia  vs.  A.  Gares,  2 
Patentes  y  Marcas,  p.  529.) 

Fees. 

The  fee  is  $50.00,  Argentine  currency,  payable  when  application 
is  made. 

Mode  of  Application  and  Procedure. 

When  the  registry  of  a  trade  mark  is  applied  for,  it  is  pub- 
lished during  five  consecutivjr  days  in  the  Official  Bulletin  of 
the  Government,  and  during  the  period  of  thirty  days  following 


8  ARGENTINE  REPUBLIC 

the  last  date  of  publication,  any  one  claiming  the  right  to  do  so 
may  protest.  If  both  parties  waive  judicial  proceedings  the  Com- 
missioner of  Trade  Marks  will  decide  the  case  within  fifteen 
days  and  appeal  may  be  had  to  the  Minister  of  Agriculture  within 
ten  days  thereafter.  If  the  parties  have  not  waived  judicial  pro- 
ceedings the  Trade  Mark  Office  sends  a  copy  of  the  petition  and 
protest  to  the  District  Court,  where  it  assumes  the  nature  of  an 
ordinary  lawsuit. 

If  there  is  no  opposition  within  the  statutory  period  the  Office 
makes  an  examination,  and  if  no  identical  or  similar  marks  are 
found  registered,  the  registry  is  granted. 

What  May  be  Registered. 

Denominations  of  articles,  or  names  of  persons  in  some  particu- 
lar form;  emblems,  monograms,  engravings,  or  prints;  seals, 
vignettes,  and  stamps  in  relief ;  borders,  words,  or  fancy  names ; 
letters  and  numerals  with  a  special  design  or  forming  a  combina- 
tion ;  casks  or  wrappings  of  articles ;  and  any  other  signs  by 
which  the  products  of  the  soil  and  agricultural  industries  can  be 
distinguished  may  be  used,  as  trade  marks.  (Art.  1.) 

The  following  can  not  be  registered  as  trade  marks : 

1.  Letters,  words,  names,  or  designations  which  the  nation, 
or  the  provinces,  alone,  use  or  should  use. 

2.  The  shape  or  form  given  to  the  articles  by  the  manufac- 
turer. 

3.  The  color  of  the  articles. 

4.  Terms  or  expressions  which  have  become  of  general  use 
and  signs  which  do  not  present  any  novel  or  special  character. 

5.  Designations  usually  employed  to  indicate  the  nature  of 
the  articles  or  the  class  to  which  they  belong. 

6.  Designs  or  expressions  of  an  immoral  nature.     (Art.  3.) 
Names  and  portraits  of  persons  can  not  be  used  as  marks  with- 
out the  consent  of  the  persons  themselves  or  their  heirs  to  and 
including  the  fourth  degree.     (Art.  4.) 

Term,  ten  (10)  years,  renewable  indefinitely  for  similar  periods. 

Requirements. 

Spanish  power  of  attorney  legalized  by  an  Argentine  Consul, 
fourteen  (14)  facsimilies  of  the  mark  and  one  electrotype,  Span- 
ish description  of  the  mark,  in  duplicate ;  if  it  consists  of  a  pic- 
ture or  an  emblem,  it  must  indicate  the  class  to  which  it  is  applied 
and  whether  it  applies  to  products  of  manufacture,  or  of  the  soil, 
or  to  objects  of  commerce. 

Priority  of  ownership  of  a  trade  mark  shall  be  determined  by 
the  day  and  hour  on  which  the  application  was  filed. 


ARGENTINE  REPUBLIC  9 

An  extract  of  the  application  will  be  published  in  the  "Boletin 
Oficial,"  with  date  of  presentation,  name  of  the  person  interested 
and  a  drawing  or  design  of  the  mark. 

If  within  thirty  (30)  days  after  the  publication,  no  one  op- 
poses the  issuance  of  the  trade  mark,  the  mark  applied  for  shall 
be  granted.  (Art.  21.) 

Opposition. 

According  to  Art.  21  anyone  may  file  an  opposition  30  days 
after  publication.  The  Patent  Office  will  refuse  registration  of 
any  trade  mark  which,  if  registered,  would  lead  to  confusion 
with  another  trade  mark.  The  applicant  may  apoeal  to  the  court 
and  from  the  court  to  the  Secretary  of  Agriculture  aeainst  the 
decision  of  the  Patent  Office.  He  may  also  appeal  to  the  Federal 
Court.  The  public  prosecutor  represents  the  Patent  Office. 

In  opposition  suits,  where  appeal  has  been  taken,  the  Patent 
Office  suspends  all  further  action  and  the  case  is  referred  to 
the  Judge  of  the  Federal  Court.  The  procedure  is  as  follows: 
A  written  demand  is  made  that  the  court  should  dismiss  the  op- 
position as  filed,  showing  that  the  opponent's  contention  is  ground- 
less. The  petition  for  dismissal  is  referred  to  the  defendant  and 
the  defendant  must  answer  9  days  from  date  of  service  of  the 
papers.  (Applicant  becomes  the  defendant.) 

After  the  answer  has  been  filed  the  arguments  of  the  court  be- 
gin, which  generally  lasts  30  days,  during  which  time  the  par- 
ties may  take  such  testimony  as  is  necessary,  etc.  Generally  the 
term  is  extended  for  1  or  2  months  longer,  but  during  the  first 
term  of  thirty  days  the  parties  must  state  the  nature  of  the  evi- 
dence. After  the  evidence  has  been  taken  both  parties  are  al- 
lowed 6  days  to  examine  the  same.  The  evidence  is  then  pre- 
sented to  the  court  and  the  court  gives  its  decision. 

The  time  consumed  in  a  suit  in  the  first  instance  ranges  from 
eight  months  to  a  year. 

After  a  decision  has  been  rendered  by  the  court  of  first  in- 
stance appeal  may  be  taken  to  the  Federal  Chamber.  In  case 
of  appeal  to  the  Federal  Chamber  the  appellant  is  given  a  period 
of  nine  days  for  filing  his  statement,  which  statement  is  referred 
to  the  appellee  for  answer,  and  he  must  answer  in  six  days. 
After  answer  is  given  the  court  renders  judgment.  The  judg- 
ment rendered  by  the  Federal  Chamber  can  be  appealed  from  only 
when  the  same  is  a  violation  of  some  constitutional  provision  or 
if  the  same  is  based  on  defect  of  form,  etc.  The  Federal  Cham- 
ber litigation  generally  lasts^one  year  or  more ;  but  the  parties 
may  file  a  petition  to  the  Judge  for  the  prompt  dispatch  of  the 


io  ARGENTINE  REPUBLIC 

matter.    However,  this  can  only  be  done  if  no  decision  has  been 
rendered  for  one  year  or  more. 

TRIBUNALS. 
Courts  of  First  Instance. 

One  Judge  at  each  Capital  of  a  Province ;  three  Judges  in  the 
Federal  Capital. 

Chambers  of  Appeal. 

Composed  of  five  Justices.  They  are  established  at  the  cities 
of  Buenos  Aires,  La  Plata,  Parana  and  Cordoba.  In  matters 
where  foreigners  are  involved  the  Chamber  at  the  Federal  Capital 
generally  intervenes. 

COURT  PROCEDURE. 
Nullity,  Imitation  or  Counterfeiting  of  Trade  Marks. 

If  the  owner  of  the  trade  mark  has  been  negligent  in  filing  an 
opposition  according  to  Article  21,  the  only  remedy  left  for  him 
is  to  bring  an  action  for  annulment  of  the  trade  mark.  The  pro- 
cedure is  the  same  as  in  opposition  suits. 

If  there  is  imitation  of  the  trade  mark  or  if  the  trade  mark 
has  been  counterfeited  the  owner  of  the  registered  trade  mark 
may  institute  either  civil  proceedings  or  he  can  bring  criminal 
action.  In  civil  proceedings  he  may  recover  damages. 

If  the  trade  mark  has  been  counterfeited  the  procedure  is  as 
follows :  The  complainant  makes  a  request  for  seizure  of  the 
goods.  The  request  is  filed  at  the  court  at  the  responsibility 
and  risk  of  the  petitioner,  and  he  must  furnish  security.  The 
court  uses  its  own  discretion,  but  the  security  required  must  sat- 
isfy the  judge  and  must  be  sufficient  to  cover  all  damages  which 
the  seizure  may  cause.  The  court,  as  a  rule  accepts  the  oath  of 
the  petitioner  (this  oath  is  known  as  the  causion  juratoria),  in 
which  he  states  that  he  assumes  the  responsibility  for  all  damages 
which  may  accrue,  and  this  is  allowed  when  the  court  is  satis- 
fied that  the  petitioner  is  a  party  of  responsibility.  The  Judge 
may  suspend  the  above  oath  and  may  accept  personal  bonds, 
etc.  After  the  seizure  is  made  the  plaintiff  must  institute  action 
by  filing  a  written  statement  and  petition  within  15  days  next 
following  the  seizure.  Failure  to  do  so  entitles  the  other  party 
to  ask  that  the  seizure  be  raised.  (Art.  63.  ) 

The  bill  of  complaint  is  filed  before  the  Federal  judge,  show- 
ing documentary  evidence  of  the  complainant's  right  to  insti- 
tute proceedings.  The  judge  then  fixes  the  date  for  argument. 
After  argument  has  been  made  the  court  again  sets  a  date  for  an- 
other hearing,  and  although  the  entire  proceeding  is  orally  con- 
ducted, a  written  statement  of  all  the  evidence  must  be  filed.  In 


ARGENTINE  REPUBLIC  II 

order  to  take  the  evidence  a  new  date  is  set  for  hearing,  and  when 
all  the  evidence  is  filed,  three  days  is  allowed  to  both  parties  to 
examine  the  records,  and  finally  a  last  hearing  is  set  for  argu- 
ment. After  that  the  judge  decides  the  case.  If  the  judgment 
is  appealed  the  Chamber  sets  a  date  for  a  hearing.  The  court 
after  going  over  the  records  renders  a  decision.  These  pro- 
ceedings generally  take  but  a  very  short  time. 

Assignment. 

The  ownership  of  a  mark  passes  to  the  heirs,  and  can  be  trans- 
ferred by  deed  or  by  will. 

The  assignment  or  sale  of  a  business  includes  that  of  the  trade 
mark  (unless  there  is  some  special  stipulation  to  the  contrary), 
and  the  person  taking  over  the  business  has  the  right  to  use  the 
mark,  even  though  it  be  a  name,  in  the  same  way  as  did  the 
former  owner,  without  any  other  restrictions  than  those  expressly 
stated  in  the  deed  of  sale  or  assignment. 

The  transfer  of  a  trade  mark  shall  be  recorded  at  the  office  in 
which  it  was  registered.  Otherwise  the  right  to  use  the  mark 
shall  not  be  acquired. 

Infringement. 

Merchandise  or  products  unlawfully  marked,  found  in  the  pos- 
session of  the  culprit  or  of  his  agents,  shall  be  confiscated  and 
sold  after  the  destruction  of  said  mark;  the  amount  realized, 
after  payment  of  the  expenses  and  indemnity  laid  down  by  this 
law,  shall  be  given  in  aid  of  the  public  schools  of  the  province 
in  which  the  confiscation  took  place.  (Art.  53.) 

Owners  of  trade  marks,  to  whose  knowledge  it  may  come  that 
there  are  to  be  found  in  the  custom-house,  postoffice,  or  any 
other  government  or  private  office,  labels,  capsules,  wrappers, 
or  any  other  articles,  similar  to  those  which  constitute  or  ap- 
pertain to  their  mark  may  apply  to  the  competent  authority  and 
ask  for  an  attachment  on  said  articles,  and  the  court  shall  grant 
the  request  on  the  'responsibility  of  the  petitioner  upon  his  giv- 
ing such  bonds  as  the  court  may  deem  proper. 

It  shall  be  optional  for  the  court  to  exempt  the  applicant  from 
giving  bond  when  he  is  a  person  of  well-known  responsibility. 
(Art.  57.) 

If  the  party  injured  by  the  use  of  a  trade  mark  does  not  file 
a  complaint  within  one  year  after  the  date  of  the  infringement 
the  action  shall  be  barred  by  limitation.  (Art.  44.) 

No  civil  or  criminal  action  shall  be  allowed  after  the  lapse  of 
three  years  from  the  time  when  the  offense  was  committed  or 
repeated,  or  after  the  lapse  of  one  year  from  the  day  on  which 
the  owner  of  the  mark  had  first  cognizance  of  the  fact. 

The  acts  which  interrupt  limitation  are  the  same  established 
by  law  in  all  cases.  (Art.  55.) 


12  ARGENTINE  REPUBLIC 

Penalties. 

The  following  shall  be  punishable  by  a  fine  of  from  $20  to 
$500  in  national  currency,  and  by  imprisonment  for  a  period 
varying  from  one  month  to  one  year,  the  corporal  penalty  not 
to  be  redeemed  by  money : 

1.  Those  who  counterfeit  a  trade  mark. 

2.  Those  who  use  counterfeited  marks. 

3.  Those  who  fraudulently  imitate  a  mark. 

4.  Those  who  knowingly  affix  a  mark  not  belonging  to  them, 
or  a  fraudulently  imitated  one,  on  their  products  or  goods. 

5.  Those  who  knowingly  sell,  place  on  sale,  or  lend  them- 
selves  to   the   sale  or   circulation  of  counterfeited   marks,   and 
those  who  sell  authentic  marks  without  the  knowledge  of  the 
owner. 

6.  Those  who  knowingly  sell,  place  on  sale,  or  lend  them- 
selves to  sell  or  circulate  articles  with  marks  counterfeited  or 
fraudulently  imitated. 

The  penal  law  of  the  Argentine  Republic,  punishing  the  of- 
fense of  wilful  trade  mark  infringement,  is  a  peculiarly  stringent 
one,  in  that  it  makes  the  intent  to  infringe  immaterial.  The  only 
trade  marks  recognized  in  the  Argentine  law  are  those  registered 
in  the  office  of  the  proper  department.  Such  registration  is  held 
to  be  notice  to  any  party  interested  of  the  rights  of  the  regis- 
trant. Accordingly,  in  a  suit  to  punish  the  infringement  of  a 
registered  trade  mark,  where  the  defendant  pleaded  that  he  had 
no  knowledge  of  the  plaintiff's  registration  and  that  for  this 
reason  he  should  not  be  held  responsible  for  the  similarity  be- 
tween the  two  marks,  it  was  held  that  the  contention  was  con- 
trary to  the  import  of  the  law ;  the  law,  it  was  said,  provided 
ample  means  of  publication,  so  that  all  who  desire  to  use  or  apply 
trade  marks  are  able  to  fulfill  the  obligation  required  of  them, 
to-wit,  to  examine  the  trade  marks  already  registered  and  to 
avoid  infringement  upon  any  of  them.  It  was  held,  therefore,  to 
be  a  presumption  of  law  that  an  infringement  or  imitation  can- 
not exist  without  the  knowledge  of  the  party  infringing.  To 
establish  a  principle  to  the  contrary,  would  leave  an  open  door 
for  bad  faith  and  Tender  the  punishment  of  offenses  of  this  kind 
almost  impossible. 

The  defendant,  accordingly  was  condemned  to  imprisonment 
for  six  months  and  to  the  payment  of  a  fine  of  five  hundred 
dollars,  in  addition  to  the  cost  of  the  suit,  reserving  moreover  to 
the  plaintiff  the  right  to  recover  all  losses  and  damages  which 
he  had  sustained  by  the  infringement,  and  directing  that  the  judg- 
ment should  be  published  in  two  daily  papers  of  the  capital  at 
the  defendant's  expense.  The  trade  mark  here  alleged  to  have 
been  infringed  was  "Nonpareil"  as  applied  to  lubricating  oils, 


ARGENTINE  REPUBLIC  13 

a  term  which  might  be  considered  at  least  suggestive  of  quality. 
(Bedford  vs.  Benyon,  Patentes  y  Marcas,  1905,  p.  342.) 

Registry  is  Necessary  to  Protect  Foreign  Goods. 

Consul-General  Alban  G.  Snyder,  of  Buenos  Aires,  calls 
American  manufacturers'  attention  to  the  absolute  necessity  of 
registering  their  trade  marks  in  Argentine  if  they  wish  to  enjoy 
exclusive  use  of  their  marks  in  that  country.  He  writes : 

"The  appropriation  of  foreign  trade  marks  has  reached  a  very 
serious  state  in  recent  years,  and  if  manufacturers  do  not  wish 
to  become  the  victims  of  unscrupulous  business  firms  or  indi- 
viduals (provided  some  of  them  have  not  already  experienced 
this  sharp  practice)  they  should  take  warning  from  the  experi- 
ence of  others.  Until  the  Argentine  law  is  changed  the  registry 
of  trade  marks  is  the  only  way  to  combat  this  class  of  men,  who 
make  it  their  object  to  profit  by  the  brains  and  business  ability  of 
their  superiors. 

"If  an  Argentine  firm  usurps  the  mark  of  a  foreign  manu- 
facturer and  registers  it,  then  the  real  owner  is  helpless,  for  the 
new  owner  can  take  legal  action  against  the  real  owner  of  the 
mark  for  imitating  or  fraudulent  use  of  same.  The  rightful 
owner  may  even  have  his  merchandise  excluded  from  the  market 
simply  because  it  bears  his  own  mark.  It  has  happened  that 
foreign  manufacturers  have  had  to  leave  the  market  after  hav- 
ing spent  much  time  and  money  in  building  up  their  business, 
or  have  had  to  pay  an  indemnity  to  a  local  firm  which  has  been 
brazen  enough  to  register  a  world-known  mark. 

"Not  only  do  local  manufacturers  appropriate  foreign  trade 
marks,  but  likewise  mark  their  wares  so  as  to  convey  the  im- 
pression that  they  are  of  foreign  manufacture,  thereby  increas- 
ing the  fraudulent  practice,  and  they  carry  this  on  by  means  of 
protective  laws.  Until  such  time  as  these  evils  are  corrected, 
American  manufacturers  should  see  that  their  trade  marks  are 
registered,  provided  the  market  is  worth  their  time  and  atten- 
tion." 

CLASSIFICATION. 

Decree  of  July  30,  1912,  Referring  to  the  Inscription  of 
Commercial  and  Agricultural  Trade  Marks. 

Buenos  Aires,  July  30,  1912. 

With  the  object  of  avoiding  the  difficulties  which  might  arise 
from  the  inscription  of  commercial  and  agricultural  trade  marks, 
in  accordance  with  the  law  No.  3975.  and  taking  into  account  that 
which  has  been  established  by  the  decrees  of  December  5,  1900, 
and  June  7th  (10th),  1912.  ' 

The  President  of  the  Argentine  Nation 


14  ARGENTINE  REPUBLIC 

Decrees: 

Article  1.  The  Administration  of  the  Patent  and  Trade  Marks 
Office  will  not  despatch  an  application  in  which  does  not  appear 
the  name  and  residence  of  the  applicant,  and  in  which  is  also 
specified  the  articles  to  which  the  mark  will  he  applied,  and  deter- 
mining the  class  to  which  they  belong  or  correspond. 

Art.  2.  The  inscription  of  commercial  and  agricultural  trade 
marks  will  be  effected  only  for  a  single  one  of  the  classes 
established  in  the  present  decree.  If  the  manufacturer  or  merchant 
should  wish  to  extend  the  use  of  a  trade  mark  to  more  than  one 
class,  he  will  have  to  file  the  corresponding  applications  and  con- 
form to  the  requisite  established  in  Article  38  of  the  law  No.  3975. 

Art.  3.  The  certificate  constituting  the  proprietorship  of  the 
tiade  mark  will  be  issued  with  reference  to  every  one  of  the 
single  classes  for  which  it  has  been  registered. 

Art.  4.  If  a  manufacturer  or  merchant  applies  for  the  inscrip- 
tion of  his  name  as  a  trade  mark,  he  will  be  obliged  to  do  so  in  a 
form  which  shall  avoid  all  confusion,  and  if  the  application 
presented  with  such  object  should  not  conform  to  this  exigency, 
the  Administration  of  the  Patent  and  Trade  Mark  Office  will 
notify  the  same  to  the  interested  party  in  the  already  established 
manner,  in  order  that  said  party  may  modify  the  ?ame  to  the 
necessary  form. 

In  the  case  of  the  interested  party  failing  to  modify  the  same, 
the  Directorate  will  pass  their  resolution  according  to  law  cor- 
responding to  the  matter. 

Art.  5.  When  in  a  label  or  drawing  the  inscription. for  which 
has  been  applied  for,  there  is  expressed  the  name  of  an  article  of 
whatsoever  class  or  nature,  the  trade  mark  will  only  be  accorded 
for  the  article  indicated  therein. 

Art.  6.  For  the  purposes  of  this  decree,  the  following  classes 
have  been  established : 

Class  1. 

Chemical  products  used  in  trade  and  manufacturing  works, 
photography,  scientific  investigations,  in  agricultural  labors,  and 
of  horticulture,  substances  anti-corrosive: 

Such  as  acids,  alkalis,  mineral  dyes,  pigments,  mineral,  vegetable 
and  animal  essences  not  medical,  photographic  plates,  paper  and 
films,  liquids  and  substances  for  photographic  purposes,  artificial 
manures  (fertilizers),  extracts  and  substances  for  tanning,  poison- 
ous substances  for  the  destruction  of  ants  and  other  harmful 
insects,  rats,  mice,  Peruvian  hares,  and  all  other  destructive 
animals,  for  instance :  carbo-sulphidc,  cyanic!  of  potash  and  the 
like. 

Class  2. 

Substances  and  products  used  for  medical,  pharmaceutical, 
veterinary  and  hygienic  purposes;  natural  or  prepared  drugs, 


ARGENTINE  REPUBLIC  15 

mineral  waters  and  medical  wines  and  tonics,  articles  and  sub- 
stances for  killing  vermin,  said  substances  being  for  domestic 
employment. 

Such  as:  pharmaceutical  and  medical  preparations,  plasters, 
blister  plasters,  antiseptics,  medicinal  soaps  and  oils,  medicinal 
products,  extracts  and  essences,  veterinary  medicaments,  fluids 
and  powders  for  scabs,  gauzes,  medicinal  bandages  and  cottons 
(wadding),  substances  for  killing  vermin,  medicinal  salts,  herbs, 
grains,  plants  and  barks. 

Class  3. 

Vegetable,  animal  and  mineral  substances  in  their  natural  or 
elaborated  state,  to  be  employed  in  manufacture,  construction  and 
domestic  uses,  and  which  are  not  included  in  other  classes : 

Such  as :  resins,  mineral,  vegetable  and  animal  greases  and  oils, 
employed  in  manufacture,  heating  and  lighting,  dyes  not  mineral, 
fibres  of  cotton  and  all  other  vegetable  textiles,  wools,  silks,  bristle, 
hairs,  feathers,  corks,  barks,  bones,  horse-hairs,  tortoise  shells, 
ivory,  ambre,  mother  of  pearl,  coral,  whalebone,  horns  in  their  raw 
state,  or  half,  elaborated  sponges  natural  or  artificial,  coals,  solid 
and  liquid  fuels,  lime,  plaster,  cements,  candles  and  tapers  in  gen- 
eral, mosaics,  timber  for  construction  purposes,  coal  tars,  asphalts, 
cinders  (ashes),  earths,  cut  or  uncut  stones,  sand,  bricks,  floor 
tiles  (flags),  tubes  not  metallic,  Dutch  (enamelled)  tiles,  roofing 
tiles,  slates,  marbles,  waxes,  moulds  in  plaster  or  gypsum,  terra- 
cotta, cement  and  similar  materials  for  building  or  construction 
purposes. 

Class  4- 

Metals  used  in  manufacturing  works,  elaborated  or  partly 
elaborated,  not  included  in  other  classes.  Products  for  casting, 
foundry,  forging,  smithery,  and  boiler  making  or  tinkering. 

Such  as :  iron,  steel,  bronze,  lead,  copper,  zinc,  tin  and  all  other 
metals  and  alloys  in  whatsoever  industrial  form  not  included  in 
another  class;  wires,  wire  textures,  suspenders,  trusses  (beams), 
columns,  channel  (corrugated),  iron  products  of  smithery  and 
foundry,  tubes,  pipes,  tanks,  casks  arid  iron  safes,  alembics  (stills), 
boilers,  kettles  and  all  other  articles  for  boiler  making  or  tinkering, 
bells. 

Class  5. 

Machines  and  apparatus  destined  for  all  classes  of  industries, 
not  included  in  other  classes,  parts  of  same,  accessories,  fittings 
and  appendages  for  diving  or  filtering  purposes,  machines,  appa- 
ratus and  implements  and  tools,  for  agriculture,  ornithology, 
apiculture,  pisciculture,  dairy  business,  wine  growing  and  its  cor- 
responding branches,  and  forestry,  coopering. 

Such  as:  pumps,  generators  for  motors,  hydraulic  machines, 
steam,  gas,  naphtha,  etc.,  machine  instruments,  boilers  not  included 


16  ARGENTINE  REPUBLIC 

in  other  classes,  motors,  sewing  machines  for  embroidery  and 
weaving",  and  needles  for  same ;  engines,  machines  and  apparatus 
for  extinguishing  fires  and  conflagrations,  ploughs,  perforating 
and  drilling  machines,  thrashing  machines,  mowing  machines, 
presses,  machinery  for  sugar  refining,  sugar  mills,  oil  manufac- 
tories, crushing  (grinding)  mills,  etc.,  water  elevating  machines, 
machines  for  skimming  milk,  bee  hives,  incubators  (hatching 
machines),  machines  to  cut  trees,  filters,  buoys,  injectors  not  in- 
cluded in  other  classes,  casks  and  barrels  in  general,  detruncating 
machines. 

Class  6. 

Surgical  instruments  for  medicine,  physics,  mathematics,  scien- 
tific and  veterinary  use,  with  the  exception  of  those  for  electrical 
purposes. 

Such  as :  lancets,  sprinklers,  pincers,  scissors,  bistouries,  forceps, 
optical  instruments,  theodolites,  eyeglasses  (spectacles),  tele- 
metres,  instruments  for  measuring,  indicating  or  regulating  (gov- 
erning) the  capacity,  quantity,  dimensions,  power,  force,  volume, 
weight  and  proportion  of  whatsoever  object  or  article;  thermom- 
eters, barometers,  kinematograph  films  and  tapes  for  same,  ortho- 
pedic apparatus,  photographic  machines  and  apparatus  and  of 
luminous  projections  and  their  accessories,  compasses  and  reduc- 
tion rules  (squares),  nautical  compasses,  metrometers,  tuning 
forks,  dehorning  tools,  apparatus  for  castration  (gelding),  etc., 
phonographic  machines  (apparatus),  disks  and  cylinders  for  same. 

Class  7. 

Musical  instruments  and  apparatus  and  their  accessories.  Music 
and  apparatus  producing  music  automatically. 

Such  as :  pianos,  harmoniums,  fonolas,  automatic  pianolas,  cyl- 
inders and  music  for  same,  printed  music,  musical  instruments  of 
percussion,  string  or  wind,  paper  for  printing  music,  capophones, 
string  (cords)  for  musical  instruments. 

Class  8. 

Jewelry  and  chronometry,  gems,  jewels,  precious  metals  and 
stones,  enamels,  objects  (articles)  of  gold,  silver  or  platinum. 

Such  as :  watches  of  all  descriptions,  jewels,  filigrees,  cigar 
boxes,  match  boxes  and  all  other  objects  manufactured  of  precious 
metals,  tools  and  utensils  for  watchmakers  and  jewelers. 

Class  9. 

Objects  relating  to  ceramics  and  pottery  in  general,  glassware, 
objects  of  bronze,  electro  plate  and  metals  not  precious,  artistic 
bronzes  and  marbles,  fancy  objects,  imitation  jewelry,  toys  and 


ARGENTINE  REPUBLIC  17 

playthings,  sporting  articles,  games,  cards,  ecclesiastical  orna- 
ments, painted  objects  of  art,  carved,  sculptured,  engraved,  litho- 
graphed, and  the  like. 

Such  as :  porcelain,  crockery,  majolica  ware,  terracottas,  crystal 
ware,  glassware,  ivory,  tortoise  shell,  lacquer,  amber,  bone,  horn, 
celluloid,  coral,  mother  of  pearl,  bronze,  metal,  onyx,  agate,  and 
all  other  precious  stones,  their  similars  and  imitations ;  articles  of 
ruolz,  electro  plate  and  metals  not  precious,  as  Reed  &  Barton, 
Christophle,  etc.,  bronzes  and  artistic  marbles,  pictures,  engravings, 
toys,  dolls,  sporting  articles,  cards,  apparatus  for  gymnastics  and 
fishing,  images,  chalices,  cruet  stands. 

Class  10. 

Hardware,  cutlery,  printing,  ropes,  cables,  locksmithery  (iron- 
mongery), ironware,  iron  fittings,  household  articles  of  bazaar  and 
tinware,  cables  not  electric,  articles  of  canvas,  frames  and  rods, 
baskets  and  wickerware,  etc. 

Such  as :  tools  and  utensils  in  general  with  or  without  edge, 
sharpened  or  otherwise,  not  included  in  other  classes,  razors  and 
shaving  apparatus,  cutlasses,  daggers,  knives,  table  services  in 
general,  poniards,  paints  and  colors,  varnishes,  lacquers,  painted 
papers,  pencils,  brushes,  oils  and  turpentine  for  paint,  ropes, 
cables,  lines  or  marlines  of  hair  or  fibre,  locks,  bolts,  fasteners, 
chains,  anchors,  and  iron  fittings,  ironmongery  or  hardware  ob- 
jects, of  tin,  brass,  and  similar  articles,  cooking  utensils,  objects 
•of  enamelled  or  reinforced  iron,  nails,  lockscrews,  tents,  flags, 
awnings,  sails  for  vessels,  cloth  bags  for  all  uses,  isolating  papers 
and  cloths,  hydroscopes  or  hydrometers,  capsules  for  bottles,  bungs 
of  cork  and  metal,  fire  kindlers,  floating  tapers,  basket  and  wicker 
objects  in  general,  chains  of  every  description,  transmitting  belts 
or  belting  in  general,  excepting  those  of  rubber  or  caoutchouc. 

Class  11. 

Arms,  explosives,  utensils  and  accessories  for  hunting  and  war- 
like purposes,  military  equipments. 

Such  as :  firearms  of  every  bore  and  force,  swords,  bayonets, 
sabres,  lances,  torpedoes,  ammunition  for  war  and  hunting  (shoot- 
ing), gunpowders,  dynamite  and  all  other  explosives,  empty  car- 
tridges, belts,  carbine  belts,  military  and  shooting  or  hunting  equip- 
ments, pyrotechnical  products. 

Class  12. 

Machines,  apparatus  and  elements  for  transporting  purposes  in 
general,  parts  of  same  and  their  accessories. 

Such  as :  locomotives,  rolling  st^ck  for  railways  and  tramways, 
wire  rails,  rails,  semaphores,  winches,  windlasses,  rolling  bridges, 

2 


i8  ARGENTINE  REPUBLIC 

transmitting  belts,  lifts,  elevators  for  loads,  worm  (endless) 
screws,  automobiles,  aeroplanes,  airships,  balloons,  motorcycles, 
hydroplanes,  vessels,  crafts,  launches,  motor  boats,  boats,  dredges, 
floating  derricks. 

Class  13. 

Furniture,  joinery,  decoration,  tapestry,  upholstery,  mattress 
making,  carpentry. 

Such  as :  furniture  of  all  kinds  of  metal,  wood,  japanned  and 
others,  carpets,  curtains  and  tapestry,  table  covers,  mattresses  and 
springs  for  beds,  mirrors,  matting,  oil  cloths,  linoleum,  friezes  and 
wainscotted  rails,  flooring,  doors,  windows,  wood  blinds,  door- 
mats, coffins,  hearses,  wooden  veneers  for  furniture  in  general. 

Class  14- 

Apparatus  and  objects  and  articles  destined  for  purposes  of 
heating,  ventilation,  lighting,  refrigeration,  hydrotherapeutics, 
sanitary  articles,  machines,  apparatus  and  objects  for  cleaning  gen- 
erally, washing  and  cleaning  of  wearing  apparel. 

Such  as:  stoves,  braziers,  heaters,  radiators,  cooking  ranges, 
boilers  for  central  heating,  heating  apparatus,  thermo-syphons, 
serpentines,  ventilators,  aspirators,  air  injectors,  gas  generators, 
lamps,  handiworks  for  lighting,  lanterns,  lighthouses,  luminous 
buoys,  chandeliers,  signal  lanterns,  beacon  lights,  freezing  appara- 
tus, machines  for  manufacturing  ice  and  ice  products,  refrigera- 
tors, apparatus  for  shower  baths,  rain  baths  and  baths  in  general, 
bathtubs,  washstands,  inodorous  water-closets,  bidets,  syphons  and 
all  other  sanitary  objects,  machines  and  apparatus  for  washing, 
wringing,  ironing  and  drying  clothes;  cleaning  apparatus  for 
carpets,  curtains  and  tapestry,  dust  aspirators,  brooms,  feather 
dusters,  brushes,  floor  rags,  dressed  sheep  skins,  soaps,  ointment, 
powders  and  liquids  for  cleaning  metals,  clothing,  woods,  skins, 
leathers,  etc.,  starch,  borax,  crystals  of  soda,  blue  for  washing, 
preparations  for  polishing  and  waxing  floors,  scourers  for  stains, 
etc. 

Class  15. 

Textures  and  tissues  in  general,  knitted  textures,  table  linen, 
linen  or  dry  goods. 

Such  as:  textures  and  tissues  of  wool,  silk,  linen,  cotton,  jute 
and  all  other  vegetable  fibres,  impermeable  or  otherwise,  mixtures 
of  same,  knitted  goods,  stockings,  undershirts,  ready-made  articles 
of  these  textures  for  underclothing,  tablecloths,  napkins,  sheets, 
pillows,  pillow  cases,  blankets,  quilts,  counterpanes. 

Class  16. 

Ready-made  clothing,  footwear  (shoeing),  tailoring,  hats, 
millinery,  laces,  fashions,  narrow  lace  ware,  fans,  umbrellas,  dry 
goods,  gloves,  perfumery,  articles  of  Morocco  leather. 


ARGENTINE  REPUBLIC  19 

Such  as:  dresses  and  costumes  and  suits  for  men,  women  and 
children  of  all  ages,  accessories  for  same,  hempen  sandals,  boots, 
shoes,  insoles,  heel  pieces  for  shoes,  hats  and  caps,  gaiters,  braid- 
ing, galloon  laces,  tassels,  embroideries,  laces  of  all  kinds,  feathers, 
artificial  flowers,  articles  for  dressmakers,  milliners,  hatmakers, 
tailors,  shoemakers,  and  seamstresses,  linens,  wools,  silks,  buttons, 
ribbons,  threads,  needles  for  sewing  and  other  uses,  etc.,  gloves, 
walking  sticks,  stays,  fans,  pocketbooks,  ladies'  bags  and  all  other 
leather  articles,  neckties,  extracts,  essences,  soaps,  cosmetics  and 
all  other  toilet  articles,  impermeable  costumes. 

Class  17. 

Caoutchouc,  india  rubber,  gutta  percha  in  their  raw  state  and  in 
all  forms  or  modes  of  preparation,  and  articles  and  objects  manu- 
factured with  these  substances,  not  being  orthopedical,  surgical  or 
electrical. 

Such  as :  ribbons  or  bands  for  transmission  purposes,  air 
chambers,  tyres,  and  hoods  for  wheels,  balls,  toys,  pipes,  tubes, 
plates,  threads,  etc. 

Class  18. 

Articles  and  material  for  printing  offices,  booksellers,  stationery 
shops,  lithography,  bookbinding,  pasteboarding,  teaching  and 
drawing.  Articles  to  be  used  in  offices,  typewriting  machines, 
figure  machines  and  registering  machines.  Inks. 

Such  as :  machines,  apparatus  and  presses  to  effect  printing  in 
whatsoever  manner,  printing  types,  cliches,  type  repositories, 
rulers,  galleys,  books  and  printed  matter  and  reproductions  in  gen- 
eral, papers  and  cartons,  with  the  exception  of  painted  papers, 
boxes,  cases  and  trays  of  pasteboard,  paper  bags,  bibliorates, 
archiving,  filing  and  classifying  apparatus,  machines  and  tools  for 
the  binding  of  books,  charts,  globes  (spheres),  blackboards,  mural 
pictures,  drawing  tables,  school  benches,  feathers,  pencils,  ink- 
stands, metal  and  rubber  stamps,  papers  and  tissues  or  textures 
prepared  for  reproducing  purposes,  slates. 

Class  19. 

Hides  and  skins  in  their  raw  state,  elaborated  and  manufactured, 
not  included  in  other  classes.  Saddlery  and  harnessing.  Trunks, 
travelling  articles  and  objects  in  general. 

Such  as:  ready-made  objects  of  hides  (skins),  harness,  saddles, 
garnitures,  whips,  horse  cloths  (horse  coverings),  buckling  ar- 
ticles, bits,  bridles,  stirrups,  spurs,  reins,  trunk  and  travelling  bags 
in  general,  belts,  straps,  portmarffeaus  (cloak  bags),  and  stick  and 
umbrella  stands,  hat  boxes. 


2O  ARGENTINE  REPUBLIC 

Class  30. 

Electricity,  electric  machinery,  ornaments,  apparatus  and  acces- 
sories intended  to  generate  power,  heat  and  lighting,  intended  for 
telephonic  purposes,  telegraphs  and  wireless  telegraphs. 

Such  as :  dynamos,  switches,  resistances,  magnets,  apparatus  for 
telegraph,  telephones  and  wireless  telephones  or  telegraphs,  elec- 
tric lamps  in  general,  lamp  stands,  tulip  shaped  globes  and  reflect- 
ors, motors,  rotators  (alternators),  cables  and  wires  for  electric 
uses,  transformators,  carbons  for  electric  lamps,  insulators,  volt- 
meters, ampermeters  and  all  other  apparatus  for  measuring  and 
experimental  purposes,  substances  or  textures  for  insulation, 
storage  batteries. 

Class  21. 

Tobaccos,  cigars  and  cigarettes,  snuffs  and  articles  for  smokers : 
Such  as :  pipes,  cigar  or  cigarette  holders,  paper  for  making 
cigarettes,  matches,  automatic  lighters,  cigar  or  cigarette  cases 
not  of  precious  metals,  cigar  and  tobacco  cases  in  general,  tinder- 
boxes. 

Class  22. 

Alimentary  substances  or  such  as  are  employed  as  alimentary 
ingredients : 

Such  as:  elaborated  cereals,  olive  (sweet)  and  other  edible 
oils,  malt,  dried  and  preserved  fruits,  flours,  feculas,  teas,  coffees, 
sagos,  chocolates,  cocoa,  preserves  of  meats,  fruits,  vegetables, 
shell  fish  and  fish,  spices,  seasoning  substances,  Paraguayan  tea, 
sugars,  salt,  honey,  baking  products  (for  bread  making),  pastry 
and  confectionery,  dairy  products,  meats,  fish,  birds,  and  eggs  and 
game  in  their  fresh  state,  vinegar,  nutritive  pastes,  chicory,  sub- 
stances for  infusions  (inspirations),  and  hot  beverages,  alimentary 
substances  for  animals. 

Class  23. 

Beverages  (drinks)  in  general,  not  medicinal,  alcoholic  or  other- 
wise, alcohol. 

Such  as :  wines,  effervescing  wines,  ciders,  beers,  spirits,  liquors, 
spirituous  liquors,  ferments,  bitters  and  other  bitter  beverages,  ab- 
sinthe, syrups,  sodas,  mineral  waters,  natural  and  artificial  mineral 
water  not  medicinal,  aperitives,  gaseous  beverages  (drinks). 

Class  n. 

Agricultural,  horticultural,  floricultural,  and  arboricultural  prod- 
ucts not  included  in  other  classes  in  virtue  of  their  condition  or 
preparation.  Live  animals. 

Such  as :  vegetables,  fruits  and  flowers  in  fresh  condition ; 
natural  grains,  corns,  seeds,  tubers  (tubercles),  bulbs  and  cereals, 
perennial  plants  and  trees.  Barks.  Birds,  fowls,  quadrupeds  and 


ARGENTINE  REPUBLIC  21 

other  live  animals  not  subject  to  the  laws  relating  to  distinction  of 
animals  by  branding. 

Class  25. 

Divers  articles  not  included  in  the  preceding  classes. 
Art.  7.     Be  this  communicated,  published  and  entered  in  the 
National  Register. 

(Signed)     Saenz  Pena   (President) 

Adolfo  Mtijica   (Minister  of  Agriculture). 

Decree  of  July  30,  1912,  signed  by  the  Ministry  of  Agri- 
culture. 

Under  the  old  classification  one  could  register  for  all  classes 
under  a  single  application,  and  it  was  not  necessary  to  specify 
anything  but  the  class  to  cover  all  articles  included  in  the  same. 

By  the  new  decree  a  separate  application  is  required  for  each 
class  in  which  registration  is  desired. 

Marking  of  Goods :     "Marca  Registrada." 

Pure  Food  Law. 

Under  date  of  April  16,  1906,  a  very  stringent  law  was  pro- 
mulgated in  the  Argentine  Republic,  regarding  the  introduction 
and  sale  of  proprietary  articles.  This  provides  that  all  proprietary 
remedies,  domestic  or  foreign,  for  external  or  internal  use,  must 
have  the  authorization  of  the  National  Department  of  Hygiene 
before  they  may  be  placed  on  sale  in  the  Republic,  in  default  of 
which  they  shall  be  treated  as  secret  remedies  and  their  sale  pro- 
hibited. For  the  purpose  of  obtaining  such  authorization,  it  is 
provided  that  application  be  made  to  the  National  Department 
of  Hygiene,  the  samples  necessary  for  analysis  and  specimens 
of  the  labels,  bottles  or  other  receptacles,  and  the  prospectuses, 
advertisements  and  circulars  of  instruction  which  are  to  accom- 
pany the  preparations  when  sold  to  the  public  being  submitted 
with  the  application.  The  preparation  is  then  analyzed,  its  cor- 
respondence with  the  formula  and  its  benefit  or  utility  determined. 
The  advertising  matter  is  also  scrutinized  with  a  view  to  deter- 
mining whether  it  is  free  from  deceptive  or  excessively  exag- 
gerated statements  regarding  the  composition  or  curative  prop- 
erties of  the  remedy.  If  the  Commission  shall  deem  the  remedy 
open  to  no  objection  upon  this  score,  the  proper  authorization 
will  be  granted.  Thereafter,  the  remedy  may  be  offered  to  the 
public,  but  only  in  connection  with  the  prospectuses  and  other 
advertisements  that  have  been  submitted  to  the  Commission.  Any 
modification  of  any  sort  introduced  in  the  advertising  matter 
that  accompanies  or  exploits  tj^e  preparation  shall  be  deemed 
by  the  Commission  a  proper  ground  for  withdrawing  the  author- 


22  ARGENTINE  REPUBLIC 

ization  and  imposing  the  fine  provided  by  the  law.  In  the  case 
of  remedies  already  authorized  to  be  sold  in  the  Argentine,  the 
space  of  one  year  is  provided  for  compliance  with  the  new  stat- 
ute. 

National  or  foreign  medicinal  preparations  or  those  called  "spe- 
cifics," whether  they  be  for  internal  or  external  use,  require  an 
authorization  from  the  Board  of  Health  before  they  can  be  placed 
on  sale,  otherwise  they  will  be  considered  as  "secret  medicines," 
the  sale  of  which  is  prohibited. 

The  publication  of  advertisements  offering  for  sale  the  special- 
ties, the  sale  of  which  have  not  been  duly  authorized  by  this  De- 
partment, is  also  prohibited.  (Art.  75.) 

Those  who  solicit  authorization  to  sell  the  articles  mentioned 
in  the  foregoing  article,  must  comply  with  the  following  rules : 

(a)  The  application  must  be  filed  before  the  Board  of  Health 
and  be  accompanied  by  the  quantity  of  the  preparation  which  is 
judged  necessary  for  the  consecutive  analysis,  by  the  qualitative 
and  quantitative  formula,  by  the  recipients,  labels,  prospectus  and 
other  indications  and  instructions,  which  the  preparation  will  bear 
on  being  placed  on  sale  for  the  general  public. 

To  this  must  be  added  a  summary  of  the  physiological  and 
therapeutic  principle  on  which  the  preparation  is  based,  and  the 
reason  of  or  the  hygienic  or  pharmacological  gain  which  this  sat- 
isfies. (Art  76.) 

The  qualitative  formula  of  the  specific  should  be  clearly  printed 
on  the  label  of  the  recipients,  indicating  the  quantity  of  the  active 
substances  contained  therein. 

The  names  of  the  proprietor  and  the  address  of  the  factory 
must  also  appear  on  the  recipients.  (Art.  77.) 

The  Board  of  Health  will  submit  for  analysis  the  preparations 
filed,  and  the  fees  prescribed  by  the  law  4039  having  been  pre- 
viously paid,  will  place  them  before  the  Special  Committee  for 
their  decision.  (Art.  78.) 

In  order  to  dispatch  this  matter  and  to  decide  as  to  the  accept- 
ance or  irefusal  of  the  same,  the  Committee  of  Specialties  must 
carefully  consider,  amongst  others,  the  following  principles : 

(a)  The  proportion,  verified  by  the  analysis  which  they  deem 
it  necessary  to  make,  of  the  product  and  of  the  declared  formula. 

(&)  The  utility  and  advantage  of  any  nature  obtained  by  the 
importation  of  the  new  preparation. 

(c)  That  in  the  advertisements  and  prospectus  of  the  same, 
the  corresponding  discretion  be  observed,  so  that  it  will  not  im- 
plicate deceit  or  exaggeration  which  tend  to  compromise  the  eth- 
ics of  the  profession.  (Art.  79.) 

The  Committee  of  Specialties,  mentioned  in  the  above  article 
is  to  be  constituted  by  the  following  officers  of  the  Board  of 
Health :  The  Chief  of  the  5th  Section ;  the  Inspector  General 
of  Pharmacies  or  Drug  Stores ;  the  Chief  of  the  Chemical  Office. 


ARGENTINE  REPUBLIC  23 

To  these  officers  must  be  added  two  distinguished  acting  chemists, 
strangers  to  this  department,  who  will  be  elected  by  the  president 
and  who  may  be  re-elected. 

The  presidency  of  this  committee  will  be  filled  by  the  Inspector 
General  of  Health  of  the  Departaimento  Nacional  de  Higiene 
(Board  of  Health).  (Art.  80.) 

The  authorization  conferred  by  the  board  for  the  sale  of  the 
specialties,  can  only  be  referred  to  in  the  advertisements,  etc.,  in 
the  following  terms ;  "venta  autorizada  por  el  Departamento  Na- 
cional de  Higiene,"  "Certificado  No.  ,"  "Expendio  libre"  or 
"Expendio  bajo  receta."  (Art.  81.) 

The  authorization  of  the  Board  having  been  obtained  for  the 
sale  of  any  specialty,  this  cannot  be  offered  for  sale  to  the  public 
either  by  the  chemists  or  agents  in  the  prospectus  which  accom- 
panies the  preparation  or  in  the  advertisements  in  the  news- 
papers, under  any  other  form  than  that  expressly  accepted  by  the 
Committee.  Any  variation  in  these,  however  slight,  may  cause  the 
withdrawal  of  the  authorization  granted  or  the  application  of 
the  fines  cited  in  Art.  117  of  the  law.  (Art.  82.) 

The  manufacturers  or  importers  of  specialties  the  formula  of 
which  is  clearly  written  on  the  label  and  which  is  at  present 
on  sale  without  the  said  authorization  of  the  Board  of  Health, 
are  allowed  a  period  of  six  months  within  which  to  comply  with 
the  prescription  of  Art  75.  (Art.  83.) 

The  vaccines,  serum,  toxines  and  the  products  of  organic  ori- 
gin chemically  undefined  and  all  other  products  of  unknown  com- 
position, as  preventive,  curative  or  diagnostic  agents,  by  means 
of  injections  against  any  infectious  disease,  cannot  be  placed 
on  public  sale  or  given  away  gratis,  without  a  previous  or  special 
authorization  of  the  Board  of  Health.  (Art.  87.) 

Those  who  violate  the  prescription  of  Arts.  75  and  111,  will 
suffer  a  fine  of  $100  to  $600  national  currency.  (Art.  119.) 

In  the  case  of  repetition  the  President  of  the  Board  of  Health 
can  double  the  fine  established  by  this  regulation,  but  always 
within  the  maximum  marked  by  law  of  $1,000. 

Extract  of  Law  N.°  4039. 

Art.  1.°  From  the  publication  of  the  present  law,  the  analysis 
effected  by  the  Chemical  Office  of  the  Departamento  Nacional 
de  Higiene,  will  be  subject  to  the  following  tariff: 

1.°  Complete  analysis  of  waters,  from  a  higienic  point  of 
view,  comprising  all  the  mineralizing  substances,  $50. 

2.°  Analysis  of  waters,  from  a  drinkable  point  of  view,  and 
without  the  determination  of  all  the  mineralizing  substances,  $10. 

3.°  Analysis  of  wines,  foods,  commercial  products,  unless  their 
object  is  to  appeal  or  contradict  the  report  of  other  offices,  ac- 
cording to  the  data  asked  for,  $10. 


24  ARGENTINE  REPUBLIC 

4.°  Analysis  of  earth,  from  an  higienic  point  of  view,  air,  gas 
and  vapors,  from  an  agricultural  point  of  view,  $300  to  $500. 

Analysis  of  Specialties. 

1.°  Analysis  of  medicinal  wines,  the  quantitative  and  quali- 
tative determination  of  the  same,  $10  to  $20. 

2.°  Analysis  of  water  for  the  hair,  perfumery,  pomades  which 
contain  antiseptic  substances,  for  the  determination  of  each  sub- 
stance, $5. 

3.°  For  other  medicinal  specialties  with  a  preparation  of  alco- 
loides  and  mixtures,  for  each  substance,  $8. 

4.°  Complete  analysis  of  mineral  water,  with  the  investiga- 
tion of  rare  bodies,  $200. 

5.°  Analysis  of  mineral  water  comprising  only  the  determina- 
tion of  the  principal  mineralizing  substances,  $10  to  $20. 

6.°     Baths,  natural  sediments,  etc.,  for  each  substance,  $10. 

DECISIONS. 
First  Registrant. 

The  Argentine  law  confers  the  exclusive  right  to  the  use  of 
a  trade  mark  upon  the  registrant  of  the  mark  irrespective  of  the 
question  of  priority  of  use.  A  decision  has  been  rendered  by 
the  Federal  Court  of  Argentine  in  which  the  effect  of  the  Argen- 
tine law  was  confirmed. 

The  plaintiff  in  this  action  had  registered  certain  marks  in  the 
Argentine  Republic  for  phonographic  records.  These  marks  it 
appears  were,  in  the  United  States,  the  property  of  an  American 
firm  from  whom  the  complainant,  as  a  matter  of  fact,  purchased 
his  goods.  The  defendants  undertook  to  import  into  the  Argen- 
tine goods  purchased  from  the  same  American  manufacturer 
under  the  same  marks.  The  complainant  instituted  a  criminal 
proceeding  against  the  defendants  for  the  infringement  of  his 
marks.  It  was  held  that  the  Argentine  law  granting  to  the 
registrant  of  a  mark  the  exclusive  right  of  ownership  therein, 
no  question  of  the  right  to  the  mark  in  a  foreign  country  was  in 
any  way  relevant ;  that  a  foreign  trade  mark  was  entitled  to  no 
protection  in  the  Argentine  except  as  it  had  derived  the  right  to 
such  protection  from  registration  under  the  law.  The  argument 
in  favor  of  the  position  taken  by  the  Argentine  Courts  is  well 
stated  in  the  following  language : 

"By  Article  68  is  clearly  indicated  the  protection  to  be  extended 
to  foreign  trade  marks  for  the  purpose  of  encouraging  manu- 
facturers or  merchants  of  other  countries  to  seek  our  markets, 
to  promote  by  fair  competition  the  development  of  industries, 
and  to  introduce  and  sell  their  products,  without  permitting  the 
negligence  of  those  whose  trade  is  of  large  proportions  to  oppose 


ARGENTINE  REPUBLIC  25 

the  activity  and  the  well  planned  course  of  our  national  com- 
merce. This  is  the  reason  why  there  has  been  fixed  a  term 
of  four  months — counting  from  the  date  of  registration  at  home 
— within  which  they  may  present  their  applications ;  it  is  indis- 
putable that  those  who  have  not  availed  themselves  of  this  privi- 
lege have  abandoned  their  rights  and  can  not  prevent  others  rep- 
resenting larger  interests  from  registering  trade  marks  identical 
with  or  similar  to  those  which  they  have  abandoned  to  their  fate. 

"If  we  accept  as  true  defendant's  views  in  this  respect,  we 
reach  the  unreasonable  result  that  it  is  impossible  to  insure  the 
permanence  of  a  trade  mark,  since  it  might  happen  that  an  iden- 
tical mark  existing  in  Europe,  may  not  have  been  used  and  may 
therefore  be  unknown  in  this  market.  Whoever  then  might  wish 
to  annul  the  mark  could  order  goods  from  Europe  under  this 
mark  and  then  petition  for  its  annulment.  What  else  would  this 
be  but  a  subterfuge  to  support  his  petition  of  annulment?  Such 
action  can  not  be  regarded  as  within  the  scope  of  honest  rivalry, 
but  would  constitute  unfair  competition  which  every  business  man 
should  avoid."  (Cassels  y  Cia  vs.  M.  E.  Repetto  y  Cia,  V.  Pat- 
entes  y  Marcas,  397.) 

Whereas  in  the  Argentine,  the  law  provides  an  ample  protec- 
tion for  the  marks  of  those  who  see  fit  to  comply  with  its  re- 
quirements, much  may  be  said  in  favor  of  the  contention  that 
whatever  loss  is  sustained  by  foreigners  through  the  piracy  of 
their  trade  marks  is  due  to  their  own  neglect  and  casts  no  re- 
proach upon  the  government  under  which  it  occurs. 

In  a  decision  rendered  July  21,  1910,  the  Argentine  Federal 
Court  held  that  foreign  words  which  when  translated  into  Spanish 
are  the  equivalents  of  symbols  already  registered,  cannot  constitute 
trade  marks  of  third  parties.  The  court  said  that  "the  trade 
mark  law  in  authorizing  the  use  of  fanciful  words  meant  to  re- 
fer to  the  composition  of  those  which  express  nothing  and  mean 
nothing  and  not  to  the  introduction  of  foreign  wrords  which  al- 
ways have  their  own  significance." 


The  complainant  Rhen  registered  the  mark  "Augusta"  for  cer- 
tain goods.  The  defendant  imported  and  sold  goods  of  the  same 
class  bearing  the  same  mark.  The  defense  was  that  the  infring- 
ing mark  was  made  and  affixed  to  the  goods  in  Europe,  and  that, 
therefore,  the  defendant  had  committed  no  offense.  Decision 
was  rendered  for  the  complainant  and  the  defendant  was  ad- 
judged to  have  committed  infringement,  the  court  holding  that 
if  such  a  defense  could  be  accepted  it  would  only  be  necessary, 
in  order  to  escape  the  penalty  for  infringement,  to  have  the  labels 
made  outside  of  the  country.  Hi  held  that  infringement  is  com- 
mitted not  only  by  the  actual  imitators  of  a  mark,  but  by  any 


26  ARGENTINE  REPUBLIC 

one  who  sells  or  places  on  sale  goods  marked  with  the  imitation, 
or  even  bearing  authentic  marks,  when  this  last  is  without  the 
knowledge  of  the  proprietor  of  the  registered  mark.  (E.  Rhen 
vs.  J.  Norris,  decision  rendered  May  30,  1908.) 

The  name  of  a  product  cannot  constitute  a  mark.  "Malted 
Milk,"  notwithstanding  that  they  are  words  foreign  to  the  lan- 
guage, cannot  be  considered  as  a  mark  if  they  indicate  the  class 
of  article.  (Borden's  Condensed  Milk  Company  vs.  Horlick's 
Food  Company.  Decree  of  the  Federal  Court,  Buenos  Aires, 
May  27,  1908.) 

"The  office  of  marks  can,  of  itself,  legally  refuse  the  registra- 
tion of  a  mark,  even  without  opposition,  when  it  is  of  the  opinion 
that  the  mark  sought  to  be  registered  is  the  same  as  or  similar 
to  and  can  cause  confusion  with  another  or  others  (already 
registered."  (Decision  of  Federal  Court,  Nov.  7,  1905.) 

IMITATION  OF  A  MARK — Use  of  the  mark  alleged  to  infringe 
prior  to  the  registration  of  the  mark  which  serves  as  ground 
for  the  action  exempts  from  the  penalty,  but  the  defendant  should 
abstain  from  continuing  to  use  the  mark.  (Decision  of  Federal 
Court,  V.  Bosch  y.Grau  vs.  J.  M.  Adoue  y  Cia,  April  12,  1909.) 

Priority  of  Use. 

A  French  firm  several  years  ago  registered  its  mark  in  the 
Argentine  Republic  but-  neglected  to  renew  the  registration  at  the 
end  of  the  original  term  of  ten  years.  A  discharged  employe  of 
the  firm  took  advantage  of  the  fact  and  registered  the  mark  in 
his  own  name.  Thereupon  the  firm  appealed  to  the  courts  for 
redress.  In  a  decision  dated  Oct.  17,  1902,  the  Federal  Courts 
of  Argentine  decided  that  the  rights  of  the  original  owner  had 
been  extinguished  by  the  lapse  of  their  registration,  and  that 
the  title  of  its  ex-employe  thereto  was  now  indefeasible.  (Ch. 
Lorilleux  y  Cia  vs.  A.  Gares,  2  Patentes  y  Marcas,  p.  529.) 

A  German,  domiciled  in  the  Argentine,  applied  to  the  Union 
Schreibmaschinen  Gesellschaft  in  Berlin,  for  the  agency  in  the 
Argentine  for  typewriters  known  as  the  "Mignon."  The  nego- 
tiations came  to  nothing,  whereupon  the  applicant  had  the  name 
registered  in  the  Argentine  as  his  trade  mark,  and  now  when 
the  company  desires  to  get  into  that  market,  they  have  the  al- 
ternative of  paying  him  one  thousand  dollars,  which  he  asks  for 
the  assignment  of  the  mark,  or  giving  their  machines  another 
name,  a  matter  which  would  be  very  expensive  on  account  of  the 
changes  to  be  made  in  electrotypes,  circulars  and  other  adver- 
tising matter. 

The  firm  Gilmore,  Thompson  &  Co.,  of  Glasgow,  having  failed 
to  renew  their  registration  for  the  mark  "Royal  Blend"  for  whis- 


ARGENTINE  REPUBLIC  27 

key,  the  mark  was  registered  by  another  company,  and  the  regis- 
trants were  forced  to  change  their  mark,  rather  than  pay  five 
thousand  dollars  in  gold  for  the  surrender  of  the  registration. 

A  trade  mark  well  known  in  a  foreign  country,  having  been 
introduced  into  the  Argentine,  was  appropriated  before  its  reg- 
istration by  the  rightful  owner  and  his  rights  thereby  cut  off. 
The  appellate  court  said,  "Whatever  may  be  the  objections  that 
can  be  made  to  the  system  adopted  by  our  law  of  marks,  it  is 
certain  that  according  to  that  system,  registration  confers  an  ex- 
clusive right  of  property  in  the  mark  registered,  in  favor  of  him 
who  registers,  regardless  of  the  fact  that  any  other  person  has 
used  the  said  mark  as  his  own  in  commerce,  without  having  reg- 
istered it." 

This  decision  reiterates  a  principle  now  so  familiar  that  the 
case  would  not  have  been  worth  reporting,  except  as  it  reverses 
the  earlier  decision,  which  at  that  time  we  looked  upon  as  a  ju- 
dicial recognition  of  the  iniquity  of  the  Argentine  law,  and  as 
in  some  measure  restricting  the  absolute  character  of  the  doc- 
trine that  the  title  to  the  mark  might  be  obtained  by  registration, 
irrespective  of  the  circumstances  of  prior  use  or  equitable  title. 
(Breyer  Hnos.  vs.  Francalanci,  Patentes  y  Marcas,  1908,  p.  496.) 

Protection  of  Trade  Names. 

Section  43  of  the  Argentine  Trade  Mark  Law,  intended  for 
the  protection  of  trade  names,  requires  any  person,  when  he 
shall  engage  in  a  line  of  business  in  competition  with  another 
person  of  the  same  name,  to  use  his  name  in  connection  with 
such  modification  or  distinguishing  characteristic  that  it  shall 
be  visibly  distinct  from  the  name  as  employed  by  the  first  user. 
While  the  Argentine  law  recognizes  that  the  benefit  of  this  act 
is  extended  to  corporations,  it  has  nevertheless  been  held  that  a 
foreign  corporation  which  has  not  complied  with  the  provisions 
of  the  Argentine  commercial  code  authorizing  it  to  do  business 
within  the  Republic,  cannot  avail  itself  of  the  protection  ac- 
corded by  this  section  of  the  law.  This  is  an  important  matter, 
inasmuch  as  it  is  conceivable  that  the  same  principle  might  be 
anolied  in  the  case  of  an  action  brought  by  such  a  corporation 
for  the  infringement  of  its  registered  trade  mark  and  should  the 
principle  be  so  applied,  it  might  be  found  that  the  registration, 
in  many  instances  was  quite  useless  except  for  the  purpose  of 
preventing  the  registration  of  the  mark  by  another.  (J.  Hallet 
Marshall  vs.  Marshall  Sons  &  Co.,  Patentes  y  Marcas,  1909, 
p.  307. 

The  Argentine  trade  mark  law  provides  that  the  names  and 
portraits  of  individuals  shall  not  be  used  as  marks  without  their 
consent,  or,  in  the  case  of  deceased  persons,  that  of  their  relatives 
to  the  fourth  degree. 


28  ARGENTINE  REPUBLIC 

The  Federal  Court  has  held  that,  in  order  to  invoke  this  pro- 
vision of  the  law  and  oppose  a  registration  because  in  violation 
thereof,  it  is  not  necessary  that  the  opponent  be  the  owner  of  a 
registered  trade  mark  in  the  name  or  portrait.  If,  as  the  court 
remarks,  this  were  so,  it  would  in  many  cases  nullify  the  .right, 
recognized  and  secured  by  the  statute.  It  is  enough  that  the 
opponent's  right  in  his  own  name  be  invaded.  (Marshall  vs. 
Bash,  Patentes  y  Marcas,  1911,  p.  88.) 

The  meaning  of  Article  4  of  the  Trade  Mark  Law  of  the  Ar- 
gentine Republic,  forbidding  the  registration  of  the  name  or  por- 
trait of  a  person  without  his  consent  or  that  of  his  heirs  if  he 
be  deceased,  has  been  explained  in  a  decision  of  a  federal  judge 
at  Buenos  Aires.  A  certain  firm  had  registered  as  a  trade  mark 
the  name  of  a  retired  partner,  Jaccard,  but  without  the  latter's 
authority  or  consent.  The  name  had,  prior  to  the  dissolution  of 
the  partnership,  appeared  in  the  firm  name,  but  it  had  not  been 
used  as  a  trade  mark  upon  goods.  Jaccard  having  applied  for 
the  registration  of  the  name  himself,  registration  was  refused, 
because  of  the  previous  registration  of  his  former  partners.  The 
case  was  brought  before  the  court  for  decision,  and  thereupon 
the  cancellation  of  the  previous  registration  was  ordered  and  the 
registration  of  his  name  in  favor  of  Jaccard  was  directed. 

It  was  argued  by  the  first  registrants  that  the  provisions  of 
the  law  did  not  extend  to  mere  surnames ;  that  it  applied  only 
where  the  entire  personal  and  family  name  was  registered.  They 
claimed  that  the  name  Jaccard  belonged  to  a  multitude  of  other 
persons  beside  the  applicant,  and  it  did  not  rest  with  one  of  these 
persons  to  control  its  use.  The  argument  that  the  provision  of 
the  law  applied  only  to  the  full  individual  name  of  the  party 
and  not  to  the  mere  surname  was  overruled.  The  error  of  this 
interpretation,  the  court  said,  was  evident,  in  view  of  the  fact 
that  the  provision  was  for  the  benefit  not  only  of  a  living  person 
whose  name  was  used,  but  of  his  heirs,  that  is  to  say,  of  all  per- 
sons of  the  same  family  name,  though  their  personal  names  are 
different.  (Jaccard  vs.  Perusset  &  Didisheim,  Patentes  y  Marcas, 
1911,  p.  165.) 


By  the  Argentine  trade  mark  law  it  is  provided  that  the  names 
or  portraits  of  individuals  shall  not  be  valid  as  trade  marks 
without  the  consent  of  the  parties  or  their  heirs.  A  suit  having 
been  brought  for  infringement  of  a  trade  mark  consisting  essen- 
tially of  the  name  "San  Martin,"  the  reference  of  which  as  a 
proper  name  appears  to  have  been  fixed  by  the  presence  in  the 
registration  of  the  portrait  of  Gen.  Jose  San  Martin,  the  defendant 
interposed  the  plea  that  this  mark  was  not  valid,  for  the'  reason 
that  it  had  been  registered  without  the  consent  required  by  the 


AUSTRALIAN  COMMONWEALTH  29 

trade  mark  law,  of  the  heirs  of  the  deceased  celebrity.  The 
court,  however,  said  that  under  the  decisions  of  the  highest  court 
of  the  Argentine,  this  objection  was  not  one  that  could  be  inter- 
posed by  any  person  other  than  the  parties  injured,  to-wit:  the 
person  whose  name  was  thus  improperly  used,  or  his  descend- 
ants. In  other  words,  that  the  registration,  could  not  be  attacked 
collaterally  upon  this  ground,  but  only  directly.  This  decision, 
the  Federal  Court  on  appeal  has  now  affirmed.  (Estrada  &  Co. 
vs.  Sarramea,  La  Jous  &  Co.,  Patentes  y  Marcas,  1909,  p.  457 ; 
1910,  p.  170.) 

The  Argentine  Republic  has  embodied  in  its  trade  mark  law 
certain  sections  which  have  furnished  the  model  for  similar  leg- 
islation in  several  of  the  Spanish  American  states.  The  law  of 
November  23,  1900,  (Art.  42-47),  provides  that  any  commercial 
name  shall  be  protected  against  the  use  of  a  name  so  similar  there- 
to as  to  be  likely  to  deceive,  without  the  necessity  of  registration, 
except  in  the  case  where  it  forms  part  of  a  trade  mark.  The  value 
of  this  apparently  salutary  provision  of  the  Argentine  law  is, 
however,  very  much  impaired  by  a  recent  decision  of  the  Argen- 
tine courts,  wherein  it  was  held  that  a  foreign  corporation 
which  did  not  have  any  established  agency  Qr  place  of  business 
within  the  Republic,  could  not  claim  the  benefit  of  these  sections 
of  the  statute.  The  reason  given  was  that  a  corporation  es- 
tablished in  the  Republic  would  have  its  name  inscribed  upon  the 
proper  official  records  and  thereby  be  made  publicly  known  within 
the  country,  whereas  a  corporation  not  established  in  the  coun- 
try, in  order  to  secure  protection  to  its  trade  name  must  register 
that  name  as  a  trade  mark  under  the  trade  mark  law  in  the  regu- 
lar way. 


AUSTRALIAN   COMMONWEALTH 

Under  this  head  are  united  the  states  of  New  South  Wales, 
Victoria,  South  Australia,  Queensland,  Tasmania  and  Western 
Australia. 

NEW  SOUTH  WALES 

The  area  of  this  state  is  310,700  square  miles.  The  population 
is  estimated  at  about  1,824,580. 

COMMERCE — The  principal  articles  of  export  are  wool,  meat 
(extract  and  preserved), -mutton,  silver,  copper  and  tin.  Coal 
exists  in  large  quantities,  the  output  being  about  7.632,138  tons. 
The  output  of  gold  is  about  353,987,  fine  ozs.  There  are  also 
extensive  iron  deposits.  It  is,  however,  upon  the  production  of 
Wool  that,  like  the  other  states  o£  Australia,  its  wealth  principally 
depends.  In  1910  wool  to  the  value  of  about  £12,250,758  was 
exported  from  this  state. 


30  AUSTRALIAN  COMMONWEALTH 

VICTORIA 

The  area  of  the  state  of  Victoria  is  87,884  square  miles,  or 
50,245,760  acres,  being  slightly  larger  than  Great  Britain.  Al- 
though one  of  the  smallest  of  the  states  comprised  within  the 
Australian  Commonwealth,  it  is  populous  and  thriving.  The 
population  is  about  1,511,003. 

COMMERCE — The  exports  consist  principally  of  wool,  gold,  pre- 
served and  frozen  meats,  dairy  produce,  hides,  skins,  etc. ;  cotton 
and  woolen  cloth,  apparel,  books,  paper,  iron,  machinery,  etc.,  are 
the  principal  articles  imported. 

SOUTH  AUSTRALIA 

The  area  of  this  state,  which  extends  right  across  the  island 
continent  from  Kangaroo  Island  on  the  southern  side  to  Melville 
Island  on  the  north  (including  the  northern  territory)  embraces 
903,690  square  miles,  ranking  after  Western  Australia  in  extent 
of  territory. 

The  northern  territory  contains  an  area  of  523,620  square 
miles. 

The  estimated  population  is:  South  Australia  proper,  about 
600,000 ;  Northern  Territory  about  7,000. 

QUEENSLAND 

This  state  comprises  the  northeastern  portion  of  the  continent 
of  Australia  ;  its  northern  extremity  is  Cape  York,  and  its  southern 
on  the  coast,  Point  Danger,  being  bounded  on  the  south  by  the 
State  of  New  South  Wales. 

The  area  of  the  state  is  668,497  square  miles,  and  its  seaboard 
about  2,250  miles.  The  population  is  about  700,000. 

COMMERCE — The  exports  consist  of  copper  ore  and  smelted 
copper,  pearl  shell  and  beche  de  mer,  tin,  green  fruit  (bananas, 
etc.),  gold,  hides  and  skins,  sugar  tallow,  frozen,  preserved  and 
salted  meat,  timber  and  wool. 

TASMANIA 

This  island  is  situated  at  the  extreme  south  of  Australia,  from 
which  it  is  distant  120  miles,  being  separated  by  Bass  Strait. 

The  area  of  the  colony,  including  the  islands,  is  26,215  square 
miles.  The  populatoin  is  about  200,000. 

The  soil  is  rich  in  minerals,  coal,  copper,  silver,  tin  and  gold 
being  raised  to  a  considerable  extent ;  almost  the  entire  trade  is 
carried  on  with  Australia  and  Great  Britain.  The  total  gold 
production  during  1910  was  about  100,000  fine  ounces. 


AUSTRALIAN  COMMONWEALTH  31 

WESTERN  AUSTRALIA 

Western  Australia,  the  youngest  of  the  Australian  states,  has 
since  the  discovery  of  the  gold  fields  some  years  ago,  made  im- 
mense strides  in  population,  wealth  and  importance  and  promises 
to  be  one  of  the  leading  states.  The  .railways  may  be  taken  as  a 
sample  of  its  increasing  prosperity. 

The  area  is  about  975,920  square  miles,  and  the  population 
about  500,000. 


MONEY,   WEIGHTS  AND  MEASURES — Same  as   Great  Britain. 
The  cental  of  100  Ibs.  is  also  used. 


Law. 

Act  of  December  21,  1905. 
Duration. 

The  registration  shall  be  for  a  period  of  fourteen  years,  but  may 
be  renewed  from  time  to  time. 

Who  May  Apply. 

Any  person  claiming  to  be  the  proprietor  of  a  trade  mark  may 
make  application  to  the  Registrar  for  the  registration  of  his  trade 
mark.  (Sec.  32.) 

What  May  Be  Registered. 

The  essential  particulars  of  a  registrable  trade  mark  shall  be 
one  or  more  of  the  following:  (a)  a  name  or  trading  style  of  a 
person  printed,  impressed  or  woven  in  some  particular  and  dis- 
tinctive manner;  or  (b)  a  written  signature  or  copy  of  a  written 
signature  of  the  person  applying  for  registration  thereof  or  some 
predecessor  in  his  business;  or  (c)  a  distinctive  device,  mark, 
brand  heading,  label  or  ticket;  or  (d)  an  invented  word  or  words 
having  no  reference  to  the  character  or  quality  of  the  goods  and 
not  being  a  geographical  name  used  or  likely  to  be  understood  in 
a  geographical  sense. 

The  additional  matter  which  may  be  added  to  the  essential 
particulars  of  a  registrable  trade  mark  shall  be:  (a)  any  letters, 
words,  or  figures;  or  (&)  any  combination  of  letters,  words,  or 
figures,  oir  of  any  of  them.  (Sees.  16  and  17.) 

Not  Registrable. 

(a)  The  words  "Trade  Mark,"  "Registered,"  "Registered 
Design,"  "Copyright,"  "Entered  at  Stationers'  Hall,"  "To  counter- 
feit this  is  forgery,"  or  words  oirtike  effect;  or  (&)  a  represen- 


32  AUSTRALIAN  COMMONWEALTH 

lalion  of  the  King,  the  Queen,  or  any  member  of  the  royal  fam- 
ily, or  of  the  royal  crown,  or  the  word  "Royal,"  or  any  word,  let- 
ter or  device  indicating  royal  or  governmental  patronage,  or  a 
representation  of  the  royal  arms  or  of  the  national  flag  of  the 
United  Kingdom,  or  of  the  flag  of  the  commonwealth  or  of  the 
national  arms  of  the  United  Kingdom  or  of  the  arms  or  seal  of 
the  commonwealth  or  any  state,  or  a  representation  of  any  living 
person  without  his  written  consent.  (Sees.  18  and  19.) 

In  determining  whether  any  particular  of  a  trade  mark  is  dis- 
tinctive, regard  may  be  had  in  the  case  of  a  trade  mark  in  actual 
use  to  the  extent  to  which  user  has  rendered  the  trade  mark  or 
the  particular  distinctive  for  the  goods  with  respect  to  which  the 
trade  mark  is  sought  to  be  registered.  (Sec.  20.) 

A  trade  mark  may  be  limited  in  whole  or  in  part  to  a  particular 
color  or  colors,  and  in  case  of  any  application  for  the  'registra- 
tion of  a  trade  mark  the  fact  that  the  trade  mark  is  so  limited 
shall  be  taken  into  consideration  by  any  tribunal  in  determining 
whether  it  is  distinctive  or  not.  If  a  trade  mark  is  registered 
without  limitation  of  color  it  shall  be  deemed  registered  for  all 
colors.  (Sec.  21.) 

A  trade  mark  must  be  registered  in  respect  of  particular  goods 
or  classes  of  goods  as  prescribed.  (Sec.  23.) 

Except  by  order  of  the  court,  the  Registrar  shall  not  register 
in  respect  of  goods  a  trade  mark  identical  with  one  belonging 
to  a  different  proprietor  which  is  already  on  the  register  in  re- 
spect of  the  like  goods,  or  class  of  goods,  or  so  nearly  resembling 
such  a  trade  mark  as. to  be  likely  to  deceive. 

Where  the  name  or  a  representation  of  a  living  person  or  a 
person  believed  by  the  Registrar  to  be  living  appears  on  a  trade 
mark,  the  Registrar  may  require  the  applicant  to  furnish  him  with 
the  consent  of  that  person  to  the  name  or  representation  appear- 
ing on  the  trade  mark  before  he  proceeds  with  the  registration 
of  the  trade  mark.  (Sec.  26.) 

Associated  Marks. 

Where  application  is  made  for  the  registration  of  a  trade 
mark  so  nearly  resembling  a  trade  mark  of  the  applicant  which 
is  already  on  the  register  as  to  be  likely  to  deceive  or  cause  con- 
fusion if  used  by  a  person  other  than  the  applicant,  the  Regis- 
trar may  require  as  a  condition  of  registration  that  the  trade 
marks  shall  be  entered  on  the  register  as  associated  trade  marks. 
(Sec.  20.) 

Series  of  Marks. 

When  a  person  claiming  to  be  the  proprietor  of  several  trade 
marks,  which  while  resembling  each  other  in  the  essential  par- 
ticulars thereof,  yet  differ  in  respect  of  (a)"  statements  of  the 
goods  for  which  they  are  respectively  used,  or  proposed  to  be 


AUSTRALIAN  COMMONWEALTH  33 

used;  or  (&)  statements  of  number,  price,  quality  or  names  of 
places,  seeks  to  register  such  trade  marks,  they  may  be  registered 
as  a  series  in  one  registration. 

Mode  of  Application. 

An  application  for  the  registration  of  a  trade  mark  must  be 
made  in  writing,  and  must  set  out  the  name  and  address  of  the 
applicant,  and  his  address  for  service,  and  must  contain  a  repre- 
sentation of  the  trade  mark,  and  be  accompanied  by  twelve  addi- 
tional representations  thereof,  which  shall  be  facsimiles  of  the 
representation  contained  in  the  application.  Seven  of  the  addi- 
tional representations  are  to  be  affixed  as  hereafter  provided,  and 
five  unaffixed. 

An  application  must  be  signed  by  the  applicant  or  by  an  agent 
on  his  behalf,  but  the  following  shall  be  sufficient. 

(a)  If  the  application  is  made  by  a  firm,  the  firm's  signature 
thereto  may  be  made  by  any  member  of  the  firm. 

(&)  If  the  application  is  made  by  a  body  corporate  or  an  as- 
sociation, it  may  be  signed  by  a  director  or  by  the  secretary  or 
some  principal  officer  thereof,  on  behalf  of  the  body  corporate  or 
association. 

Where  an  application  is  signed  by  an  agent  on  behalf  of  the 
applicant,  the  application  must  be  accompanied  by  an  authority 
by  the  applicant  to  the  agent. 

Where  possible,  a  representation  of  the  trade  mark  must  be  af- 
fixed to  the  square  in  the  form  of  application. 

Where  the  'representation  exceeds  the  square  in  size,  the  repre- 
sentation must  be  mounted  on  linen,  and  part  of  the  mounting 
affixed  to  the  square,  and  the  rest  folded  over. 

Where  the  representation  cannot  be  affixed  to  the  square  in 
the  form  of  application,  a  specimen  or  copy  of  the  trade  mark 
may  be  lodged  with  the  application  either  in  full  size  or  on  a  re- 
duced scale,  and  in  such  manner  and  form  as  the  Registrar  di- 
rects. 

Where  a  trade  mark  contains  words  other  than  English  words 
or  in  other  than  Roman  characters,  a  translation  of  the  words 
shall,  if  the  Registrar  so  requires,  be  indorsed  on  or  affixed  to  the 
application,  and  each  additional  representation  of  the  mark 
lodged  with  it. 

Where  an  application  relates  to  a  series  of  trade  marks,  a  rep- 
resentation of  each  trade  mark  of  the  series  shall  be  affixed  as 
aforesaid  to  the  form  of  application,  and  to  each  of  the  accom- 
panying Forms  Q. 

Where  an  application  is  for  the  registration  of  a  trade  mark 
registered  in  one  or  more  States  under  any  State  Trade  Marks 
Act,  it  must  be  accompanied  by  a  facsimile  of  the  trade  mark  as 
•registered  in  each  State,  as  well  as  by  the  additional  representa- 
tions. / 


34  AUSTRALIAN  COMMONWEALTH 

The  Registrar  may,  if  dissatisfied  with  the  representation  of  a 
trade  mark,  require  a  fresh  representation,  either  before  he  pro- 
ceeds with  the  application,  or  before  he  registers  the  trade  mark. 

Every  application  for  registration  of  a  trade  mark  shall  be  in- 
dorsed with  the  actual  time  of  its  receipt,  either  at  the  Trade 
Marks  Ofifice  or  at  a  Sub-office.  For  the  purposes  of  this  regula- 
tion, the  time  at  which  an  application  is  lodged  in  a  State,  ac- 
cording to  the  standard  of  legal  time  in  that  State,  shall  be 
reckoned  as  the  actual  time  of  lodgment  of  the  application. 

Applications  for  registration  of  trade  marks  sent  by  prepaid 
letter  through  the  post,  shall,  as  far  as  practicable,  be  recorded 
in  the  order  in  which  the  letters  containing  them  were  delivered 
at  the  Trade  Marks  Office  or  Sub-office ;  or  in  the  case  of  letters 
delivered  at  the  same  time,  in  the  order  in  which  they  were 
opened. 

On  receipt,  of  the  application  the  Registrar  shall  furnish  the 
applicant  with  an  acknowledgment  thereof. 

If,  after  considering  the  Examiner's  report,  the  Registrar  is 
of  opinion  that  the  trade  mark  is  in  compliance  with  the  Act  and 
no  bar  to  its  registration  exists,  he  shall  accept  the  applica- 
tion. 

If  the  Registrar  is  of  opinion  that  the  trade  mark  is  not  in 
compliance  with  the  Act  or  that  some  bar  to  its  registration  exists 
lie  shall  give  notice  thereof  to  the  applicant.  The  notice  may 
state  the  grounds  of  the  Registrar's  opinion  and  shall  inform  the 
applicant  that  he  is  entitled  to  be  heard  personally  or  by  his  agent 
before  the  Registrar -deals  with  the  application. 

Within  fourteen  days  from  the  receipt  of  the  notice  or  such 
further  time  as  is  fixed  by  the  notice,  the  applicant  shall  notify 
the  Registrar  whether  or  not  he  desires  to  be  heard  upon  the 
matter,  and  in  default  of  his  doing  so  the  application  shall  be 
deemed  to  be  abandoned. 

If  the  applicant  notifies  the  Registrar  that  he  desires  to  be 
heard  the  Registrar  shall  fix  a  time  for  the  hearing,  and  shall 
give  the  applicant  not  less  than  ten  days'  notice  of  the  time  so 
fixed,  and  if  the  applicant  fails  to  appear  personally,  or  by  his 
agent,  at  the  time  fixed  for  the  hearing,  the  application  shall  be 
deemed  to  be  abandoned. 

At  the  hearing,  the  Registrar  shall  hear  the  applicant,  and 
shall  consider  the  application,  and  shall  decide  whether  to  ac- 
cept it  with  or  without  modifications  or  conditions,  or  to  refuse 
it. 

Every  application  for  the  registration  of  a  trade  mark  which 
has  been  accepted  shall  be  advertised  by  the  Registrar  in  the 
Official  Journal. 

For  the  purposes  of  the  advertisement  the  applicant  may  be 
required  to  furnish  a  block  or  electrotype  (or  more  than  one,  if 


AUSTRALIAN  COMMONWEALTH  35 

necessary)  of  the  trade  mark,  of  such  dimensions  as  is  directed 
by  the  Registrar,  or  such  other  information  or  means  of  adver- 
tising the  trade  mark  as  is  required  by  the  Registrar;  and  the 
Registrar,  if  dissatisfied  with  any  block  or  electrotype  furnished 
by  the  applicant  may  require  a  fresh  block  or  electrotype  before 
proceeding  with  the  advertisement. 

When  an  application  relates  to  a  series  of  trade  marks,  the 
applicant  may  be  required  to  furnish  a  wood  block  or  electrotype 
(or  more  than  one,  if  necessary)  of  any  or  of  each  of  the  trade 
marks  constituting  the  series ;  and  the  Registrar  may,  if  he  thinks 
fit,  insert  with  the  advertisement  of  the  application  a  statement 
of  the  extent  to  which  the  several  trade  marks  differ  from  one 
another. 

If  no  representation  of  the  trade  mark  is  inserted  in  connec- 
tion with  the  advertisement,  or  if  the  trade  mark  is  limited  to 
a  particular  color  or  colors,  and  in  all  cases  in  which  he  deems 
it  desirable,  the  Registrar  shall  refer  in  the  advertisement  to  the 
place  where  a  specimen  or  representation  of  the  trade  mark  is 
deposited  for  exhibiton. 

Opposition. 

Where  a  ground  of  opposition  to  the  registration  of  a  trade 
mark  is  that  it  is  identical  with  a  trade  mark  already  registered 
under  the  Act  or  a  State  Trade  Marks  Act,  in  respect  of  the  like 
goods  or  class  of  goods,  or  so  nearly  resembles  the  latter  trade 
mark  as  to  be  likely  to  deceive,  the  notice  shall  state  the  date 
of  'registration,  and  the  number  of  the  registered  trade  mark. 

In  any  case  of  opposition  to  the. registration  of  a  trade  mark 
the  Registrar  may,  at  the  request  of  the  parties  or  otherwise,  or- 
der that  all  or  any  part  of  the  evidence  shall  be  taken  viva  voce 
or  by  affidavit  and  may  give  such  directions  as  are  required  in 
that  behalf,  but,  in  the  absence  of  any  direction  by  the  Registrar, 
the  evidence  in  any  such  case  shall  be  by  declaration  and  shall 
be  given  as  follows : 

(a)  Within  one  month  after  the  receipt  of  the  counter-statement 
the  opponent  shall  leave  at  the  Trade  Marks  Office  the  evi- 
dence he  adduces  in  support  of  his  opposition,  and  deliver 
to  the  applicant  copies  thereof. 

(&)  Within  one  month  after  the  delivery  to  the  applicant  of  the 
opponent's  evidence,  the  applicant  shall  leave  at  the  Trade 
Marks  Office  his  evidence  in  answer,  and  deliver  to  the  op- 
ponent copies  thereof. 

(c)  Within  fourteen  days  after  the  delivery  of  the  applicant's 
evidence  the  opponent  shall  leave  at  the  Trade  Marks  Office 
his  evidence  in  reply,  and  deliver  to  the  applicant  copies 
thereof.  The  last-mentioned  evidence  shall  be  confined  to 
matters  strictly  in  reply. 


36  AUSTRALIAN  COMMONWEALTH 

(</)  No  further  evidence  shall  be  left  on  either  side  except  by 
leave  of  the  Registrar  upon  the  written  consent  of  the  par- 
ties or  by  special  leave  of  the  Registrar  given  on  an  applica- 
tion made  to  him.  Either  party  making  the  application 
shall  give  notice  thereof  to  the  opposite  party,  who  shall 
be  entitled  to  oppose  the  application.  Application  for  leave 
to  lodge  further  evidence  shall  be  accompanied  by  the  pre- 
scribed fee. 

(e)  Where  exhibits  are  referred  to  in  a  declaration,  but  are  not 
attached  thereto,  the  party  adducing  the  evidence  shall  either 
furnish  copies  or  impressions  thereof  to  the  other  party,  or 
send  the  originals  to  the  Trade  Marks  Office.  The  originals 
must,  if  the  Registrar  so  requires,  be  produced  at  the  hear- 
ing. 

If  the  opponent  fails  to  leave,  within  the  time  allowed,  declara- 
tions in  support  of  his  opposition,  the  opposition  shall  be  deemed 
to  have  been  abandoned. 

If  the  applicant  fails  to  lodge,  within  the  time  allowed,  dec- 
larations in  answer  to  opponent's  declarations  in  support  of  the 
opposition,  or  to  state  that  he  intends  to  reply  upon  the  docu- 
ments lodged  with  the  application,  the  application  shall  be  deemed 
to  have  been  abandoned. 

On  the  completion  of  the  evidence,  the  Registrar  shall  appoint 
a  time  for  the  hearing  of  the  case,  and  shall  give  the  parties  at 
least  seven  days'  notice  of  the  appointment. 

Registrar's  Jurisdiction. 

The  law  officer,  on  appeal  from  the  Registrar  has,  in  a  deci- 
sion, determined  this  question. 

In  the  case  in  question,  the  application  had  been  accepted  and 
published  and  the  time  for  filing  opposition  had  expired.  After 
the  acceptance  of  the  application,  however,  four  subsequent  ap- 
plications for  registration  of  the  same  mark  were  received.  Sec- 
tion 27  of  the  act  provides  that,  when  several  persons  apply  to  be 
registered  as  the  proprietor  of  the  same  trade  mark  the  Registrar 
may  refuse  to  register  the  mark  and  require  the  submission  of 
the  controversy  to  the  court.  Under  this  section  the  Registrar 
claimed  the  right  to  require  the  submission  of  the  applicants' 
rights  to  the  court  at  whatever  stage  the  controversy  might  arise. 
The  law  officer,  however,  held  that  he  retained  no  such  right, 
after  having  once  accepted  the  application.  If  this  were  not  so, 
all  that  would  be  necessary  to  prevent  the  registration  of  a  mark, 
would  be  for  the  party  seeking  to  prevent  its  registration  to  file 
an  application  before  the  registration  had  actually  been  made  and 
file  an  additional  one  before  the  controversy  raised  by  the  first  was 
disposed  of.  Thus  the  registration  could  be  delayed  indefinitely. 
The  law  officer  held  that  the  act  gave  those  who  wished  to  oppose 


AUSTRALIAN  COMMONWEALTH  37 

applications  that  had  been  accepted,  every  opportunity  to  do  so, 
by  the  designation  of  a  statutory  period  for  the  purpose.  Thus 
it  was  clearly  intended  that  the  application  having  been  once  ac- 
cepted, the  mark  should  be  registered  unless  opposed.  (In  re 
Burrows  &  Co.,  Australian  Off.  Jour,  of  Trade  Marks,  1910,  p. 
506.) 

Prior  Use. 

That  delay  in  making  the  application  is  not  a  ground  for  re- 
fusing cancellation  of  a  trade  mark  in  a  proper  case  was  decided 
by  the  high  court  of  Australia. 

The  appellant  had  sold  in  Tasmania,  from  the  year  1882,  and 
had  advertised  some  time  prior  thereto,  a  tonic  preparation  under 
the  name  of  "phosferine."  About  1892,  the  respondent  began  to 
sell  a  similar  preparation  under  the  name  of  "Gould's  phosferine" 
and  registered  the  word  "phosferine"  alone,  in  1894,  under  the 
merchandise  marks  act.  In  1907,  thirteen  years  after  the  regis- 
tration, the  appellant  moved  before  the  supreme  court  to  have  the 
mark  expunged.  The  motion  was  dismissed,  but  upon  appeal  to 
the  high  court  it  was  held  that  the  lapse  of  time  was  no  bar,  that 
the  respondent's  mark  in  any  case  was  not  the  word  alone  as  reg- 
istered, but  the  words  "Gould's  phosferine,"  and  he  was  not 
therefore  entitled  to  register  the  latter  word  only;  that,  more- 
over, the  appellant  was  prior  in  date  of  use,  and  priority  of  use 
is  the  foundation  of  property  in  a  trade  mark.  (Ashton  &  Par- 
sons, Ltd.  vs.  Gould,  7  Commonwealth  Law  Reps.,  598.) 

In  the  year  1906,  application  was  made  for  the  registration  of 
a  mark  consisting  of  a  circle  surrounding  a  shield,  the  latter 
being  surmounted  with  a  crown  and  having  the  word  "premier" 
and  other  features  upon  it.  The  application  was  opposed  by  the 
registered  owner  in  New  South  Wales  since  1890  of  the  words 
"premier  brand."  It  was  ordered  by  the  Registrar  that  the  reg- 
istration be  limited  to  the  states  outside  of  New  South  Wales, 
but  the  court  on  appeal  held  that  the  case  was  one  of  "honest 
concurrent  user"  within  the  provisions  of  the  commonwealth 
trade  mark  act,  and  that  the  registration  should  be  made  to  ex- 
tend to  the  entire  commonwealth.  (Bedgood  &  Co.  vs.  Graham, 
7  Commonwealth  Law  Rep.  752.) 

It  has  been  quite  a  common  practice  for  the  agents  of  foreign 
firms  to  apply  for  and  obtain  registration  of  the  trade  marks  of 
their  principals,  but  such  registrations  are  illegal  and  can  be  can- 
celled by  a  proceeding  instituted  by  the  rightful  owner  of  the 
mark. 

Australia  is  one  of  the  countries  in  which  owners  of  trade 
marks  do  not  forfeit  their  rights  entirely  by  a  failure  to  obtain 
proper  protection  for  their  marks  in  due  season.  It  goes  without 
saying,  however,  that  the  expeny  of  procuring  the  cancellation 
of  a  wrongful  registration  and  of  re-establishing  a  title  that  has 


38  AUSTRALIAN  COMMONWEALTH 

been  clouded  by  a  hostile  registration,  is  much  greater  than  would 
be  the  expense  of  providing  against  such  a  contingency  in  the 
first  instance,  through  a  registration  made  by  the  lawful  owner 
himself. 

When  Trade  Mark  Deemed  Applied. 

A  trade  mark  shall  be  deemed  to  be  applied  to  anything  if  it 
is  woven  in,  impressed  on,  worked  into,  or  annexed  or  affixed  to, 
the  thing. 

A  trade  mark  shall  be  deemed  to  be  applied  to  goods  if  (a) 
it  is  applied  to  the  goods  themselves;  or  (b)  it  is  applied  to  any 
covering,  label,  reel,  or  thing  in  or  with  which  the  goods  are 
sold  or  exposed  or  had  in  possession  for  any  purpose  of  trade 
or  manufacture;  or  (c)  it  is  used  in  any  manner  likely  to  lead 
to  the  belief  that  it  refers  to  or  describes  or  designates  the  goods. 

"Covering"  includes  any  stopper,  glass,  bottle,  vessel,  box, 
capsule,  case,  frame,  or  wrapper;  and  "label"  includes  any  band 
or  ticket.  (Sec.  92.) 

Requirements. 

Power  of  attorney,  appointment  of  agent,  one  electrotype  not 
exceeding  two  inches  square  and  twelve  facsimiles. 

Summary  of  Classes. 

CLASSES. 

Raw  or  partly  prepared  substances 1  to  5,  46 

Machines  and  tools 6  to  12,  18,  19 

Mineral   and   metal   goods 13  to  17 

Explosives,  naval   sundries,  carriages 20  to  22 

Cotton,  textiles,  stuffs,  skins 23  to  37 

Clothing,    rubber    goods 38,  40 

Food,  drink,  tobacco 42  to  45 

Furniture,  candles,  soap,  toilet  goods 41,  47,  48 

Paper,  stationery,  games,  sporting  goods 39,  49 

Miscellaneous  (i.  e.,  not  in  other  classes) 50 

CLASS  1.  Chemical  substances  used  in  manufactures,  photogra- 
phy, or  philosophical  research,  and  anti-corrosives. 

CLASS  2.  Chemical  substances  used  for  agricultural,  horticul- 
tural, veterinary,  and  sanitary  purposes.- 

CLASS  3.  Chemical  substances  prepared  for  use  in  medicine 
and  pharmacy. 

CLASS  4.  Raw  or  partly  prepared  vegetable,  animal,  and  min- 
eral substances  used  in  manufactures,  not  included  in  other 
classes. 

CLASS  5.  Unwrought  and  partly  wrought  metals  used  in  man- 
ufacture. 


AUSTRALIAN  COMMONWEALTH  39 

CLASS  6.  Machinery  of  all  kinds,  and  parts  of  machinery,  ex- 
cept agricultural  and  horticultural  machines  included  in  Class  7. 

CLASS  7.  Agricultural  and  horticultural  machinery,  and  parts 
of  such  machinery. 

CLASS  8.  Philosophical  instruments,  scientific  instruments  and 
apparatus  for  useful  purposes.  Instruments  and  apparatus  for 
teaching. 

CLASS  9.  Musical  instruments. 

CLASS  10.  Horological  instruments. 

CLASS  11.  Instruments,  apparatus,  and  contrivances,  not  med- 
icated, for  surgical  or  curative  purposes,  or  in  relation  to  the 
health  of  men  or  animals. 

CLASS  12.  Cutlery  and  edge  tools. 

CLASS  13.  Metal  goods  not  included  in  other  classes. 

CLASS  14.  Goods  of  precious  metals  (including  aluminum, 
nickel,  Britannia  metal,  etc.),  and  jewelry,  and  imitations  of  such 
goods  and  jewelry. 

CLASS  15.  Glass. 

CLASS  16.  Porcelain  and  earthenware. 

CLASS  17.  Manufactures  from  mineral  and  other  substances 
for  building  or  decoration. 

CLASS  18.  Engineering,  architectural,  and  building  contriv- 
ances. 

CLASS  19.  Arms,  ammunition,  and  stores  not  included  in  Class 
20. 

CLASS  20.  Explosive  substances. 

CLASS  21.  Naval  architectural  contrivances  and  naval  equip- 
ments not  included  in  Classes  19  and  20. 

CLASS  22.  Carriages. 

CLASS  23.  (a)  Sewing  cotton;  (b)  cotton  yarn. 

CLASS  24.  Cotton  piece  goods  of  all  kinds. 

CLASS  25.  Cotton  goods  not  included  in  Classes  23,  24,  or  38. 

CLASS  26.  Linen  and  hemp  yarn  and  thread. 

CLASS  27.  Linen  and  hemp  piece  goods. 

CLASS  28.  Linen  and  hemp  goods,  not  included  in  Classes  26, 
27  and  50. 

CLASS  29.  Jute  yarns  and  tissues,  and  other  articles  made  of 
jute,  not  included  in  Class  50. 

CLASS  30.  Silk-spun,  thrown,  or  sewing. 

CLASS  31.  Silk  piece  goods. 

CLASS  32.  Other  silk  goods  not  included  in  Classes  30  and  31. 

CLASS  33.  Yarns  of  wool,  worsted  or  hair. 

CLASS  34.  Cloths  and  stuffs  of  wool,  worsted  or  hair. 

CLASS  35.  Woolen  and  worsted  and  hair  goods,  not  included 
in  Classes  33  and  34. 

CLASS  36.  Carpets,  floorcloth  and  oilcloth. 

CLASS  37.  Leather,  skins,  inwrought  and  wrought,  and  ar- 
ticles made  of  leather,  not  included  in  other  classes. 


4O  AUSTRALIAN  COMMONWEALTH 

CLASS  38.  Articles  of  clothing. 

CLASS  39.  Paper  (except  paperhangings) ,  stationery,  and 
bookbinding. 

CLASS  40.  Goods  manufactured  from  India  rubber  and  gutta 
percha,  not  included  in  other  classes. 
CLASS  41.  Furniture  and  upholstery. 

CLASS  42.  Substances  used  as  food,  or  as  ingredients  in  food. 
CLASS  43.  Fermented  liquors  and  spirits. 

.  CLASS  44.  Mineral  and  aerated  waters,  natural  and  artificial, 
including  ginger  beer. 

CLASS  45.  Tobacco,  whether  manufactured  or  unmanufactured. 

CLASS  46.  Seeds   for  agricultural  and  horticultural  purposes. 

CLASS  47.  Candles,    common    soap,   detergents;    illuminating, 

heating,  or  lubricating  oils ;  matches ;  and  starch,  blue,  and  other 

preparations  for  laundry  purposes. 

CLASS  48.  Perfumery,  including  toilet  articles,  preparations 
for  the  teeth  and  hair,  and  perfumed  soap. 

CLASS  49.  Games  of  all  kinds  and  sporting  articles  not  in- 
cluded in  other  classes. 

CLASS  50.  Miscellaneous,  comprising  the  following  subclasses : 
SUBCLASS.  1.  Goods  manufactured   from  ivory,  bone,  or 
wood,  not  included  in  other  classes  or  subclasses. 

SUBCLASS  2.  Goods   manufactured   from   straw  or  grass, 
not  included  in  other  classes  or  subclasses. 

SUBCLASS  3.  Goods,  manufactured   from   animal  or  veg- 
etable substances,  not  included  in  other  classes  or  subclasses. 
SUBCLASS  4.  Tobacco  pipes. 

SUBCLASS  5.  Umbrellas,     walking    sticks,     brushes,     and 
combs. 

SUBCLASS  6.  Furniture,  cream,  plate  powder. 
SUBCLASS  7.     Tarpaulins,  tents,  rickcloths.  rope,  twine. 
SUBCLASS  8.  Buttons  of  all  kinds,  other  than  of  precious 
metal  or  imitations  thereof. 

SUBCLASS  9.  Packing  and  hose  of  all  kinds. 
SUBCLASS  10.  Goods  not  included  in  other  classes  or  sub- 
classes. 

Each  subclass  of  Gass  50  shall,  for  the  purposes  of  the  regis- 
tration of  a  trade  mark,  be  deemed  to  be  a  class. 

Assignment. 

A  trade  mark  when  registered  may  be  assigned  and  transmit- 
ted only  in  connection  with  the  goodwill  of  the  business  con- 
cerned in  the  particular  goods  in  respect  of  which  it  has  been 
registered  and  shall  be  determinable  with  that  good  will. 

Infringement. 

No  person  shall  be  entitled  to  institute  any  proceeding  to  pre- 
vent or  recover  damages  for  the  infringement  of  a  trade  mark, 


AUSTRALIAN  COMMONWEALTH  41 

unless  in  the  case  of  a  registrable  trade  mark  it  is  registered 
under  this  Act  or  a  State  Trade  Marks  Act. 

The  rights  acquired  by  registration  of  a  trade  mark  shall  be 
deemed  to  be  infringed  by  the  use,  in  respect  of  the  goods  in 
respect  of  which  it  is  registered,  of  a  mark  substantially  identi- 
cal with  the  trade  mark  or  so  nearly  resembling  it  as  to  be  likely 
to  deceive. 

Provided  that  any  tribunal,  in  deciding  on  the  question  of 
infringement,  shall  admit  evidence  of  the  usages  of  the  trade 
in  respect  to  the  get-up  of  those  goods  and  of  any  trade  marks 
or  get-up  legitimately  used  in  'respect  of  them  by  other  persons. 

Protection  of  Trade  Marks. 
Whoever — 

(a)  forges  a  registered  trade  mark;  or  (&)  falsely  applies  a  reg- 
istered trade  mark  to  any  goods;  or  (c)  makes  any  die, 
block,  machine,  or  instrument  for  the  purpose  of  forging  or 
of  being  used  for  forging  a  registered  trade  mark;  or  (d) 
disposes  of  or  has  in  his  possession  any  die,  block,  machine 
or  instrument  for  the  purpose  of  forging  or  of  being  used 
for  forging  a  registered  trade  mark, 

shall,  unless  he  proves  that  he  acted  without  intent  to  defraud,  be 
guilty  of  an  indictable  offense,  and  liable  to  imprisonment  for 
any  term  not  exceeding  three  years. 

Whoever  sells  or  exposes  for  sale,  or  has  in  his  possession  for 
sale  or  for  any  purpose  of  trade  or  manufacture,  any  goods  to 
which     any     forgery     of     a     registered     trade     mark     is     ap- 
plied or  to  which  any  registered  trade  mark  is  falsely  applied, 
shall  be  guilty  of  an  offense  against  this  Act,  unless  he  proves — 
(a)   that  he  acted  without  intent  to  defraud;  or    (6)   that  the 
goods  were  manufactured  in  or  imported  into  Australia  and 
the  trade  mark  was  applied  to  them  before  the  commence- 
ment of  this  Act  and  were  held  by  him  bona  fide  and  without 
intent  to  defraud. 
Penalty :     One  hundred  pounds. 

Whoever  imports  into  Australia  any  goods  to  which  any  for- 
gery of  a  registered  trade  mark  is  applied  or  to  which  a  registered 
trade  mark  is  falsely  applied  shall,  unless  he  proves  that  he  did 
not  knowingly  import  the  goods  in  contravention  of  this  Act,  be 
guilty  of  an  offense  against  this  Act. 
Penalty :  One  hundred  pounds. 

Whoever  aids,  abets,  counsels  or  procures  or  is  in  any  way 
knowingly  directly  or  indirectly  concerned  in  or  privy  to — 
(a)    the  commission  of  any  offense  against  this  Act;  or    (&) 
the  commission  of  any  act  outside  Australia  which  if  com- 
mitted in  Australia  would  be  an  offense  against  this  Act, 
shall  be  guilty  of  an  offend  against  this  Act. 
Penalty :    One  hundred  pounds. 


42  AUSTRALIAN  COMMONWEALTH 

The  following  goods  are  prohibited  to  be  imported,  and  shall, 
if  imported,  be  forfeited  to  the  King: 

(a)  All  goods  to  which  any  forgery  of  a  registered  trade  mark 
is  applied,  or  to  which  any  registered  trade  mark  is  falsely 
applied;  and  (b)  all  goods  manufactured  at  any  place  out- 
side Australia  and  having  applied  to  them  any  trade  mark 
being  the  registered,  trade  mark  of  any  manufacturer,  dealer 
or  trader  in  Australia  unless  the  trade  mark  is  accompanied 
by  a  definite  indication  of  the  country  in  which  the  goods 
were  made  or  produced. 

All  imported  goods  forfeited  under  this  section  may  be  seized 
by  any  officer  of  Customs. 

Marking  Goods:     "Registered  Trade  Mark." 

Unfair  Competition. 

The  extent  to  which  the  principles  of  the  English  law  are  in 
force  in  the  British  colonies  is  illustrated  by  a  decision  of  the 
first  civil  court  of  Melbourne,  Australia,  in  a  suit  to  restrain  the 
passing  off  of  one  brand  of  cordial  in  the  place  of  another,  asked 
for  by  customers  at  the  bar.  The  evidence  was  offered  of  several 
witnesses,  who  had  been  employed  to  find  out  what  the  defendant 
was  doing  and  who  testified  that  when  they  called  for  the  cor- 
dial of  the  complainant,  they  were  served  with  another  cordial, 
under  a  somewhat  similar  mark. 

The  judge  said  that  in  view  of  the  numerous  instances  of  this 
character  of  which  testimony  was  offered,  it  was  clear  that  the 
substitution  could  not  have  happened  by  mistake  and  there  was 
enough  to  show  an  intention  to  pass  off.  That  being  so,  the 
plaintiff  was  entitled  to  an  injunction  against  the  defendant,  re- 
straining the  passing  off  of  any  other  liquor  in  the  place  of  his. 
Judgment  was  granted  for  the  plaintiff,  and  an  injunction 
awarded  as  indicated,  with  costs.  (O.  T.,  Limited  vs.  Me  Ar- 
thur, October  11,  1911.) 

The  only  notable  fact  connected  with  this  decision  is  that  it 
was  based  upon  no  provision  of  statute,  but  upon  those  equitable 
principles  of  the  English  law  for  the  discouragement  of  fraud  and 
deceit,  which  seem  to  be  the  common  heritage  of  English  speak- 
ing peoples,  wherever  found. 

Important  Decisions. 

Application  was  made  for  the  registration  as  a  trade  mark  of 
the  word  "Woolkadie,"  in  respect  of  hats.  Registration  was  re- 
fused by  the  Registrar  of  Trade  Marks,  and  appeal  was  taken 
to  the  Law  Officer.  The  appeal  was  dismissed  on  the  ground 
that  the  word  was  not  an  invented  word  within  the  meaning 
of  Section  16  (d}  of  the  Trade  Marks  Act,  1905.  the  Law  Officer 
holding  that  the  word  "Caddie"  or  "Kadie"  is  a  well  known 
Australian  word  for  a  hat. 


AUSTRALIAN  COMMONWEALTH  43 

Application  of  Bowen  &  Co.  (No.  9375)  for  registration  of 
"Laxettes"  as  a  Trade  Mark  in  respect  to  medicine — Refusal  by 
Registrar — Appeal  to  Law  Officer — Appeal  dismissed. 

The  applicants  on  the  1st  of  June,  1910,  applied  for  registra- 
tion of  the  word  "Laxettes"  as  a  Trade  Mark  for  Medicine. 
The  Registrar  of  Trade  Marks  on  the  27th  of  September,  1910, 
refused  the  application,  holding  that  the  word  "Laxettes"  is  not 
an  invented  word,  within  the  meaning  of  Section  16  of  the  Trade 
Marks  Act  1905,  and  furthermore  has  reference  to  the  char- 
acter of  the  goods.  The  Registrar  cited  the  case  of  the  East- 
man Photographic  Materials  Co.  Ltd.  (16  R.  P.  C,  476,  ap- 
plication for  registration  of  a  trade  mark,  "Solio,")  in  which  at 
page  48  Lord  Shand  said: 

"There  must  be  invention  and  not  the  appearance  of  inven- 
tion only.  It  is  not  possible  to  define  the  extent  of  invention 
required,  but  the  words,  I  think,  should  be  clearly  and  sub- 
stantially different  from  any  word  in  ordinary  and  common 
use.  The  employment  of  a  word  in  such  use,  with  a  diminu- 
tive or  a  short  meaningless  syllable  added  to  it,  or  a  mere 
combination  of  two  known  words,  would  not  be  an  invented 
word." 

From  the  decision  of  the  Registrar,  the  applicants  on  Oct. 
5,  1910,  appealed  to  the  Law  Officer,  on  the  ground  that  the 
word  "Laxettes"  was  an  invented  word  within  the  meaning  of 
the  Act;  that  numerous  coined  words  ending  "ettes"  or  "ets" 
or  "etts"  have  been  registered  in  Australia  in  Class  3  as  invented 
words,  as,  for  instance,  "Formettes,"  No.  8132 ;  "Ache-ets,"  No. 
5950;  "Neverlettes,"  No.  5196;  "Cascarets,"  No.  5365,  etc.  The 
applicants  pointed  out  the  fact  that  similar  words  had  been  regis- 
tered in  Great  Britain. 

On  Nov.  4,  1910,  the  Law  Office  affirmed  the  action  of  the 
Registrar  refusing  to  register  the  mark,  and  dismissed  the  ap- 
peal. 


Application  was  made  for  the  registration  of  the  word  "Del- 
uge" as  a  Trade  Mark  for  skylights.  Registration  was  refused 
by  the  Registrar  on  the  ground  that  the  word  carried  "character- 
istic of  commendation."  On  appeal  to  the  Law  Officer  the  word 
was  held  descriptive,  and  the  decision  of  the  Registrar  was  con- 
firmed.— Florant,  Application  No.  9692. 

"Kangaroo."    "Siveet  Lips."    Decisions. 

Two  trade  mark  decisions  by  the  Registrar  of  Trade  Marks 
are  important  as  showing  the  interpretation  accorded  to  Sec- 
tions 16,  23,  and  25  of  the  Trifde  Marks  Act  of  1905.  In  the 
first  case,  application  was  made  in  class  13  in  respect  of  lamps 


44  AUSTRALIAN  COMMONWEALTH 

for  a  trade  mark  consisting  of  a  picture  of  a  kangaroo  holding 
a  lamp,  with  the  word  "Kangaroo"  printed  below  the  picture. 
The  application  was  refused  on  the  ground  that  the  trade  mark 
closely  resembled  eleven  other  trade  marks  already  registered 
in  the  same  class.  In  prosecuting  the  case,  the  applicant's  agent 
contended  that  while  the  eleven  trade  marks  were  registered  in 
the  same  class,  none  of  them  were  registered  for  lamps ;  and  in 
support  of  this  contention,  he  declared  that  Section  25  of  the 
Trade  Marks  Act  of  1905  forbids  registration  only  "in  respect  of 
the  like  goods,  or  class  of  goods."  He  asserted,  further,  that  a 
trade  mark  consisting  of  a  kangaroo,  bearing  a  lamp,  attached 
to  lamps,  would  not  be  likely  to  deceive  those  dealing  in  wire 
nails  or  harness  or  cutlery  or  edged  tools,  which  were  some  of 
the  articles  covered  by  the  trade  marks  on  the  register.  In  de- 
ciding the  case,  the  Registrar  said  that- the  question  involved 
here  is  not  so  much  the  likelihood  of  deceiving  the  customers, 
but  rather  one  of  the  interpretation  of  the  words  "like  goods  or 
class  of  goods,"  as  they  are  written  in  Section  25.  In  order  to 
arrive  at  a  correct  interpretation  of  these  words,  the  Registrar 
reverted  to  the  Imperial  Trade  Marks  Registration  Act  of  1875, 
which  reads  "or  classes  of  goods."  The  Registrar  then  pointed 
out  that  Section  23  of  the  Trade  Marks  Act  of  1905  says  "a  trade 
mark  must  be  registered  in  respect  of  particular  goods  or  classes 
of  goods  as  prescribed,"  and  he  declared  that,  in  his  opinion,  the 
words  "class  of  goods"  in  Section  25  referred  to  "classes  of 
goods"  in  Section  23.  The  application  was  refused. 

The  law  officer  of  -the  Commonwealth  stated  on  appeal  that, 
in  his  opinion,  "class"  of  goods  in  Section  25,  means  one  of  the 
prescribed  classes  referred  to  in  Section  23,  but  nevertheless  he 
held  that  the  application,  having  been  refused  registration,  he 
could  not  issue  an  order  requiring  the  Registrar  to  make  the 
entry,  for  according  to  Section  25  such  an  order  can  only  be 
made  by  the  Court.  The  appeal  was  dismissed. 

The  second  case  had  to  do  with  an  application  for  the  reg- 
istration of  the  words  "Sweet  Lips"  in  class  42  in  respect  of 
confectionery.  The  application  was  refused  entry  on  the  ground 
that  the  words  had  reference  to  the  character  or  quality  of  the 
goods  within  the  meaning  of  Section  16  (e)  of  the  Trade  Marks 
Act  of  1905-.  The  applicants  submitted  that  the  words  as  applied 
were  not  descriptive  of  the  character  or  quality  of  the  goods, 
but  that,  on  the  other  hand,  "  'Sweet  Lips'  is  an  arbitrary  term 
which  is  equally  grateful  to  sweet  or  sour  or  dry  or  moist  or 
any  other  kind  of  lips."  In  deciding  the  case,  the  Registrar 
quoted  the  words  of  Mr.  Justice  Cozens-Hardy  in  the  "Uneeda" 
case :  "It  does  seem  to  me  that  these  words  are,  and  are  in- 
tended to  be,  commendatory  and  suitable  to  describe  something 
which  a  purchaser  would  find  comforting  and  advantageous,  and 
are  used  as  being  descriptive  of  the  quality  and  character  which 
would  be  suitable  for  his  wants."  The  application  was  refused. 


AUSTRIA  45 

In  dealing  with  the  case  on  appeal,  the  Law  Officer  upheld 
the  views  of  the  Registrar  and  said  in  addition,  that  the  prin- 
cipal business  of  the  proposed  user  must  also  be  taken  into  con- 
sideration. He  declared  that  if  "Sweet  Lips"  were  applied  to 
galvanized  iron,  they  would  have  no  reference  to  character  or 
quality,  but  when  applied  to  confectionery,  they  become  com- 
mendatory, and  descriptive  of  the  character  or  quality  of  the 
goods  suitable  for  the  purchaser's  wants.  The  appeal  was  dis- 
missed, and  the  application  refused  acceptance. 


AUSTRIA 

The  empire  of  Austria  comprises  14  provinces,  with  an  area 
of  115,903  square  miles,  and  had  in  1900  a  population  of  26,- 
150,708. 

The  great  bulk  of  the  trade,  both  import  and  export,  is  with 
the  German  Empire,  amounting  to  about  two-thirds  of  the 
whole. 

COMMERCE — Austria  is  exceedingly  rich  in  minerals  of  every 
description,  including  copper,  gold,  silver,  quicksilver,  nickel, 
lead,  tin,  zinc,  antimony  etc.,  etc.  Coal  and  iron  form  the  prin- 
cipal mining-  products,  being  75  per  cent,  in  value  of  the  whole. 

One  of  Austria's  great  sources  of  wealth  is  wood,  and  the 
principal  wood-producing  provinces  are  Bukovina  and  Bohemia. 

Rock  salt  exists  in  immense  beds.  Petroleum  is  found  in 
large  quantities  in  Galicia,  the  production  of  crude  oil  in  1908 
being  1,734,235  tons.  In  the  production  of  wine  Austria  is 
second  only  to  France ;  very  little  of  this  wine  is  exported,  the 
amount  imported  being  almost  equal.  Flax,  hemp,  tobacco  and 
hops  are  cultivated. 

The  imports  embrace  every  description  of  goods  and  mer- 
chandise, and  consist  principally  of  coffee,  fruit,  cereals,  rice,  cat- 
tle, eggs,  lard,  fish,  wine,  coal,  minerals,  dyeing  materials,  raw 
cotton,  cotton  yarn  and  goods,  flax,  hemp  and  jute,  raw  wool  and 
silk,  iron,  chemicals,  woolen  yarn  and  goods,  silk  goods,  paper, 
leather  and  machines.  Agricultural  produce  forms  the  chief  Aus- 
trian export,  and  consists  of  sugar,  barley,  wheat,  malt,  seeds, 
cattle,  eggs,  beer  etc. 

Amongst  the  manufactures  a  prominent  place  is  taken  by  the 
following:  Textile  goods,  fine  leather  goods,  gloves,  china  and 
glassware,  hardware  and  fancy  goods,  paper,  hats,  ironware,  gar- 
ments and  linen,  boots  and  shoes,  etc. 

The  glass  industry  is  very  important.  This  industry  has  been 
established  in  Bohemia  for  over^two  centuries,  and  there  are  now 
in  Bohemia  a  large  number  of  glassworks  and  grinding  estab- 


46  AUSTRIA 

lishments.     The  chief  factories  for  producing  plate  and  mirror 
glass  are  situated  near  Pilsen. 

MONEY — Krone=100  Heller=20  cents. 

WEIGHTS  AND  MEASURES — Metric  System  is  in  force. 


AUSTRIA 

(Including  Bosnia,  Herzegovina  and  Lichtenstein.) 

Law. 

January  6,  1890,  and  decree  of  the  Ministry  of  Commerce  of 
December  15th,  1906. 

Term. 

The  registration  of  marks  shall  be  renewed  every  ten  years, 
reckoning  from  the  date  of  registration,  by  a  fresh  payment  of 
the  tax,  otherwise  the  right  to  the  mark  will  be  considered  as  ex- 
pired. (Art.  16.) 

Renewal. 

Under  the  Austrian  law  a  trade  mark  cancelled  by  reason  of 
expiration  of  the  period  of  ten  years  cannot  be  registered  within 
two  years  thereafter -without  the  consent  of  the  original  regis- 
trant. This  gives  the  first  registrant  a  period  of  two  years  within 
which  he  may  renew  the  registration  and  protects  him  against 
the  appropriation  of  his  mark  by  another  during  that  time.  (De- 
cision of  the  Ministry  of  Commerce,  Jan.  2,  1911,  Z  1994/1.) 

What  May  be  Registered. 

In  this  law  under  the  term  "Marks"  are  understood  the  special 
marks,  such  as  devices,  numbers,  vignettes  and  the  like,  which 
serve  to  distinguish  in  commerce  certain  products  and  goods 
from  other  similar  products  and  goods.  (Art.  1.) 

No  person  shall  be  prevented,  through  the  registration  of  any 
mark  which,  also  contains  letters  or  words,  from  using  his  name 
or  that  of  his  firm,  even  if  it  be  an  abbreviated  form,  for  dis- 
tinguishing his  goods.  (Art.  5.) 

Prior  user  is  entitled  to  registration. 

The  Minister  of  Public  Works  has  held  that  words  or  sentences 
applied  to  an  article,  not  as  a  distinctive  mark  of  the  goods,  but 
to  enhance  the  practical  or  aesthetic  value  of  the  goods,  can- 
not serve  as  a  trade  mark.  Specifically,  he  holds  that  certain  sen- 
timental inscriptions,  applied  by  the  maker  to  engagement  rings, 


AUSTRIA  47 

are  not  susceptible  of  trade  mark  protection,  since  they  are  not 
of  the  character  to  distinguish  the  goods  bearing  them  from  the 
similar  goods  of  other  manufacturers,  and  would  not  be  under- 
stood to  be  so  used.  On  the  other  hand  they  at  most  give  to  the 
article  a  greater  sentimental  value,  and  while  identifying  the 
character  of  the  rings,  would  not  serve  to  identify  to  the  pur- 
chaser the  maker  thereof.  (Austrian  Patent-Blatt,  11)11,  p.  65.) 

Trade  Marks  Excluded  from  Registration. 

The  following  marks  for  goods  are  excluded  from  being 
registered,  and  therefore  no  sole  right  to  them  can  be  obtained : 

1.  Which   are  exclusively  composed  of  portraits  of  the  Em- 
peror or  of  members  of  the  imperial  house. 

2.  Which  merely  consist  of  the  arms  of  the  state  or  other  pub- 
lic arms,  numbers,  letters  or  words. 

3.  Which  are  in  general  commercial  use  for  certain  sorts  of 
goods. 

4.  Improper  or  offensive  representations  or  such  as  are  other- 
wise contrary  to  public  morality  or  contain  such  inscriptions  or 
statements  as  are  not  in  accordance  with  the  actual  commercial 
state  of  affairs  or  the  truth,  and  are  liable  to  deceive  the  consum- 
ing public.      (Art.   3.) 

Marks  in  which  portraits  of  the  Emporer  or  of  any  member 
of  the  imperial  house,  representations  of  the  Imperial  Eagle  or 
of  public  arms  form  a  considerable  part,  shall  only  be  registered 
if  the  right  to  use  these  special  marks  within  the  meaning  of  the 
existing  regulations  shall  have  been  demonstrated  previously. 
(Art.  4.) 

The  Austrian  Minister  of  Commerce  has  rendered  decisions 
wherein  it  is  held  that  the  word  "Nonpareil"  and  the  phrase  "Non 
plus  ultra"  are  not  registrable  in  Austria  as  trade  marks,  being 
considered  as  descriptive  of  quality,  and  therefore  denied  regis- 
tration according  to  Section  No.  1  of  the  Trade  Mark  Law. 

The  Austrian  Minister  of  Commerce  has  rendered  a  decision 
declaring  unregistrable  as  Trade  Marks,  words  in  the  English 
language  which  convey  a  meaning,  the  German  expression 
for  which  would  not  be  registrable.  This  decision  was  given  in 
connection  with  the  word  "Safety,"  the  Ministry  holding  that  the 
meaning  of  the  corresponding  German  word  "Sicherheit,"  would 
bar  it  from  registration  as  expressing  a  special  quality  of  the 
goods  with  which  the  mark  was  to  be  used. 

A  mark  consisting  of  the  letters  "B.  S.  B.,"  the  Imperial  Eagle 
and  the  words  "trade  mark  registered,"  is  not  registrable,  be- 
cause neither  of  the  first  two  features  are  admissible  under  the 
Austrian  trade  mark  law  and  the  additional  words  give  to  the 
mark  no  distinctiveness.  The  mark  is,  therefore,  not  calculated 
to  distinguish  the  goods  to  whicjs  it  is  applied  from  others  of  a 
like  character. 


48  AUSTRIA 

A  mark  consisting  of  the  letters  "G.  T."  printed  in  Roman  type 
and  surrounded  by  a  frame  or  border  of  a  single  line,  are  not 
registrable  as  a  trade  mark.  Under  tbe  provision  of  the  law 
mere  letters  are  not  of  themselves  distinguishing  marks,  since 
they  are  frequently  used  upon  goods  for  other  purposes  than  to 
distinguish  the  origin,  as,  for  example,  to  distinguish  the  quality 
or  price  of  the  goods  and  also  as  an  abbreviation  of  the  name 
of  the  firm,  of  the  manufacturer  or  dealer.  The  mere  presence 
of  the  line  border  about  the  letters  does  not  of  itself  make  the 
mark  a  distinctive  one.  (Blatt  fiir  Patent-Muster-und  Zeichen- 
wesen,  April  27,  1910.) 

"Radium"  was  held  to  be  unregistrable  on  the  ground  that  it 
was  either  descriptive  or  deceptive,  for  soaps,  perfumery,  cos- 
metics ;  natural  and  artificial  mineral  waters  of  every  kind ; 
spring,  bath  and  mineral  salts  of  every  kind ;  borax,  medicinal 
oils,  cosmetic  creams,  cosmetic  essences,  cosmetic  extracts,  hair 
wash,  head  wash,  mouth  wash,  pomades  for  beard  and  hair,  cos- 
metic and  toilet  preparations,  medicinal  soaps,  beard  wax,  bril- 
liantine,  tooth  wash,  perfume,  powder,  toilet  soap,  tooth  paste 
tooth  powder,  and  glycerine. 

"Radium"  was  held  a  registrable  trade  mark  for  candles. 

"Radiogen"  was  held  unregistrable  for  bath  salts,  on  the 
ground  that  it  was  either  descriptive  or  deceptive. 

"Radioplast"  for  plasters,  and  "Radiotherm"  for  bath  soften- 
ing substances  were  held  unregistrable  on  the  same  grounds. 
(Decisions  of  the  Austrian  Ministry  of  Public  Works,  August 
21,  1909,  and  September  22,  1909.) 

The  name  "Edison"  was  refused  as  a  mark  for  push  buttons, 
unless  with  the  consent  of  the  owner  of  that  name,  for  the  rea- 
son that  its  use  would  be  deceptive  and  would  prejudice  the  in- 
terests of  the  distinguished  inventor  who  bears  it. 

Under  the  fourth  section  of  the  trade  mark  law,  a  registered 
trade  mark  may  be  cancelled  upon  the  petition  of  one  who  can 
prove  that,  at  the  time  of  the  registration,  the  mark  had  already 
come  to  be  recognized,  in  the  trade  circles  concerned,  as  a  mark 
of  identification  of  his  goods.  Whether  the  "trade  circles  con- 
cerned" were  confined  to  Austria,  or  whether  proof  of  earlier 
use  and  consequent  recognition  of  the  petitioner's  title  in  other 
countries  is  also  admissible,  has  long  been  an  open  question. 
This  was  settled  by  a  decision  holding  that  proof  as  to  the  use  of 
the  mark  in  foreign  countries  is  admissible. 

The  test  of  similarity  of  goods,  in  cases  of  use  of  the  same  or 
like  marks,  is  defined  to  be  the  likelihood  of  the  goods  being 
regarded  as  of  the  like  origin,  whether  because  adapted  to  the 
same  purpose,  made  in  the  same  factories  and  sold  in  the  same 
stores,  or  to  the  same  class  of  customers. 

Austria  refuses  to  consider  as  a  valid  trade  mark,  one  con- 
sisting merely  of  a  container  or  receptacle,  as,  for  example,  a 


AUSTRIA  49 

barrel  or  bottle.  With  respect  to  color,  a  distinction  is  made  in 
that  country,  depending  on  whether  the  color  is  that  of  the  back- 
ground or  of  the  distinctive  device  forming  the  trade  mark.  In 
the  one  case  the  color  alone  is  not  recognized  as  distinctive  of 
the  goods.  In  the  other  case  it  is  recognized  and  protected  as 
part  of  the  mark.  (Adler,  Die  Bezeichnungen,  etc.  75.) 

"Red  Cross."     Law  of  August  23,  1912. 

He  who  uses  the  Geneva  mark  or  the  words  "RED  CROSS" 
or  "GENEVA  CROSS"  without  having  a  right  to  the  use  there- 
of, or  who  uses  this  mark  or  designation  in  a  modified  form,  in 
such  manner,  however,  that  the  impression  of  the  Geneva  mark  is 
implied  thereby,  shall  be  sentenced  by  the  authorities  of  the  State 
to  the  payment  of  a  fine  not  exceeding  K.  500,  or  to  imprisonment 
for  a  term  not  exceeding  one  month.  Articles  illegally  marked 
shall  be  seized  regardless  of  the  failure  to  pronounce  sentence.  The 
authorities  of  State  shall  decree,  at  the  expense  of  the  owner,  the 
removal  of  the  illegal  marks  and  order  the  confiscation  of  the 
articles  in  case  that  the  removal  of  the  marks  is  impossible.  Con- 
fiscated articles  shall  be  placed  at  the  disposal  of  the  Austrian 
society  of  the  Red  Cross. 

Concessions  heretofore  granted  for  the  use  of  the  mark  or  the 
name  "RED  CROSS,"  as  well  as  the  right  to  trade  marks  and 
designs,  the  use  of  which  is  contrary  to  the  provisions  of  this  law, 
remain  valid  until  September  27,  1913.  Owners  of  registered 
firms  in  which  the  words  "RED  CROSS"  or  "GENEVA  CROSS" 
are  contained,  shall  make  corresponding  changes  in  their  firm  on 
or  before  this  term,  otherwise  they  shall  be  compelled  to  make 
these  changes  by  the  commercial  tribunal  under  the  provision  of 
Art.  26  of  the  commercial  law  and  of  Sec.  12  of  the  law  on  import. 

This  law  comes  into  force  on  the  day  of  its  publication,  Sept. 
7,  1912. 

Mode  of  Registration. 

By  virtue  of  the  provisions  of  a  new  treaty  of  commerce  en- 
tered into  between  Austria  and  Hungary,  in  October,  1907,  new 
regulations  regarding  the  registration  of  trade  marks  in  these 
countries  have  gone  into  effect.  Hitherto  it  has  been  necessary 
for  foreign  owners  of  trade  marks  to  register  in  both  countries 
at  the  same  time,  registration  in  a  single  country  of  a  foreign 
mark  not  having  been  permitted.  Hereafter,  however,  foreign 
subjects  may  register  their  trade  marks  either  in  Austria  or  in 
Hungary.  This  is  the  principal  feature  of  novelty  in  the  regula- 
tions. It  may  be  added  that  the  protection  of  foreign  trade 
marks  registered  in  Hungary  extends  to  Bosnia  and  Her- 
zegovina. 

Four  copies  of  the  marks  for  which  any  person  shall  desire 
to  obtain  the  exclusive  right,  mvret  be  filed  in  the  Chamber  of 

4 


5O  AUSTRIA 

Commerce  and  Industry  in  whose  district  the  business  in  ques- 
tion is  situated.  One  copy  shall  be  attached  to  the  Register  of 
Marks  which  is  to  be  kept  by  the  Chamber  of  Commerce  and 
Industry;  one  copy  shall  be  returned  to  the  applicant  inscribed 
with  the  acknowledgment  prescribed  in  the  succeeding  para- 
graphs. Two  copies  shall  be  laid  before  the  Minister  of  Com- 
merce. The  applicant  must,  at  the  same  time,  state  for  what 
classes  of  goods  his  mark  is  intended.  Further,  a  block  of  each 
mark  must  be  filed  with  the  Chamber  of  Commerce  and  Industry, 
which  will  be  returned  to  the  applicant  after  having  been  used. 
In  the  case  of  marks  for  materials  such  as  metal,  earthenware, 
glass  and  the  like,  at  least  three  samples  of  the  materials  with 
the  marks  impressed  therein  shall  be  filed.  (Art.  13). 

Fee  for  Registering  Trade  Marks. 

For  registering  each  mark  a  tax  of  10  Kr.  shall  be  paid,  which 
shall  go  into  the  treasury  of  the  Chamber  of  Commerce  and  In- 
dustry, where  the  registration  was  effected.  (Art.  15.) 

Assignments. 

In  order  to  transfer  the  right  to  a  mark,  within  the  meaning 
of  Art.  9,  assignee  must  produce  proof  of  his  having  acquired 
the  business  to  which  it  relates. 

The  transfer  is  subject  to  the  same  tax  as  the  first  registra- 
tion (Art.  15)  and  shall  be  entered  both  on  the  certificate 
granted  to  the  applicant  (Art.  13,  paragraph  2),  as  well  as  in 
the  register  of  the  Chamber  of  Commerce  (Art.  14),  and  in  the 
Central  Register  of  Marks  (Art.  17),  and  published  (Art.  17, 
last  paragraph).  (Art.  20). 

The  Austrian  law  requires  that  an  assignment  of  a  trade  mark, 
which  must  be  accompanied  by  change  of  ownership  of  the  busi- 
ness, shall  be  entered  in  the  register  within  three  months,  or  the 
owner's  rights  in  the  mark  shall  be  lost.  In  a  late  decision  it  was 
held  that  the  transfer  of  a  business  from  a  single  individual  to 
a  corporation  was  such  a  change  of  ownership  as  requires  to  be 
entered  in  the  trade  mark  register,  in  connection  with  the  trade 
mark  used  in  the  business,  even  though  there  was  no  change 
whatever  in  the  firm  name.  It  makes  no  difference  that  the  con- 
cern is  a  German  one,  and  that,  therefore,  the  status  of  the  cor- 
poration is  determined  by  the  German  commercial  code.  So  far 
as  concerns  the  requirement  that  the  assignment  be  registered, 
the  Austrian  law  alone  is  to  be  consulted. 

The  transfer  of  a  trade  mark  need  not  necessarily  be  accom- 
panied by  a  transfer  of  the  entire  business,  if  that  branch  of  the 
business  in  connection  with  which  it  is  used  be  a  separate  one, 
and  be  capable  of  transfer  apart  from  the  rest  of  the  business. 
(Dr.  Paul  Abel  in  Markenschutz  und  Wettbewerb,  1910,  p.  273.) 


AUSTRIA  51 

Requirements, 

One  certified  copy  of  the  United  States  Trade  Mark  showing 
a  facsimile  of  the  protected  mark  and  enumerating  the  articles 
or  goods  which  the  mark  is  applied  to. 

One  power  of  attorney,  signed  by  the  applicant  or  applicants 
in  full.  In  case  the  mark  has  to  be  registered  in  Austria-Hun- 
gary in  another  name  than  that  given  in  the  United  States  certifi- 
cate, a  certified  assignment  has  to  be  attached  and  legalized  by  an 
Austro-Hungarian  consul. 

Four  facsimiles  of  the  mark  and  two  electrotypes. 

In  case  the  mark  will  be  shown  on  the  manufactured  goods  in 
raised  or  stamped-in  characters,  four  specimens,  blocks  or  discs, 
presenting  the  characters  (but  without  the  words  "Trade  Mark" 
or  "Schutzmarke")  are  to  be  produced  and  ought  to  be  of  the 
material  of  which  the  goods  are  made,  as  metal,  porcelain,  glass, 
etc.  Precious  metals  may  be  substituted  by  brass,  nickel,  steel 
or  the  like.  These  specimens  ought  to  be  perforated  at  the  edge 
for  attaching  tacks  and  should  show  a  free  margin  of  about  one 
inch  around  the  characters. 

List  of  Goods. 

(a)  Applicants  in  the  country. 

In  all  cases  where  an  application  is  filed  for  the  protection  of 
a  trade  mark  for  a  series  of  goods,  especially  such  as  are  classed 
in  more  than  one  of  the  six  groups  of  goods  enumerated  below, 
the  applicant  must  furnish  a  list  of  goods,  in  six  copies,  signed 
by  him  or  his  representative,  wherein  the  goods  shall  be  arranged 
according  to  the  group  of  goods  indicated  below  and  alphabet- 
ically recited  within  each  group. 

The  six  groups  of  goods  are: 

1.  Metals,  metalware,  tools,  instruments  and  machines. 

2.  Stone,  earthen  and  glass  ware. 

3.  Wooden,  straw,  paper,  bone,  rubber  and  leather  goods. 

4.  Yarns,  tissues,  wearing  apparel  and  articles  of  dress. 

5.  Articles  of  food,  beverages  and  agricultural  products;  and 

6.  Chemical  products. 
(&)   Foreigners. 

Above  all,  a  transcript  of  the  list  of  goods,  like  that  upon 
which  the  foreign  trade  mark  registration  is  based,  must  be  fur- 
nished in  one  copy.  In  this  transcribed  list  the  goods  must  be 
numbered  in  successive  order.  Further,  there  must  be  furnished 
six  lists  of  goods,  signed  by  the  applicant  or  his  representative, 
in  which  the  statements  of  goods  of  the  foreign  list  are  arranged 
according  to  the  six  preceding  groups  and  are  named,  within 
each  group,  alphabetically,  with  fte  addition  of  the  ordinary  num- 
ber of  the  foreign  list. 


52  AUSTRIA 

Laics  in  Force  to  Prevent  the  Sale  or  Importation  of  Goods 
Bearing  a  False  Indication  of  Origin. 

No  law  is  in  force  to  prevent  the  sale  or  importation  of  goods 
bearing  a  false  indication  of  United  States  or  other  origin  ex- 
cept in  the  case  of  hops.  Existing  laws  merely  protect  trade 
and  manufacture  marks  registered. 

Marking  Goods  :     (Optional)  "Schutzmarke," 

Extinction  of  Trade  Marks. 

Marks  become  extinct — 

(a)  On  application  of  the  proprietor  of  the  mark; 

(b)  If  the  registration  shall  not  have  been  renewed  when  due 
under  the  regulations  of  Art.  16. 

(c)  If  the  transfer  shall  not  have  been  duly  carried   out. 
(Arts.  9  and  20.) 

(d}  If  the  Minister  of  Commerce  shall  decide  that  under  Ar- 
ticles 3  and  4,  the  mark  should  not  have  been  registered. 

(e)  In  consequence  of  the  decision  of  the  Minister  of  Com- 
merce obtained  in  any  action  about  the  existence  of  a  right  to  a 
mark.  (Art.  30.)  (Art.  21.) 

The  extinction  of  a  mark  shall  be  entered  on  the  certificates 
(Art.  14)  as  well  as  in  the  register  of  the  Chamber  of  Commerce 
and  Industry  (Art.  14)  and  on  the  Central  Trade  Mark  register, 
and  it  shall  be  published.  (Art.  17.)  (Art.  22.) 

Infringement. 

Any  person  who  shall  knowingly  put  in  circulation  or  keep  for 
sale  goods  which  are  unauthorizedly  marked  with  a  mark,  the 
exclusive  right  of  user  of  which  belongs  to  another,  and  fur- 
ther any  person  who  for  this  purpose  knowingly  counterfeits  a 
mark,  commits  an  offense,  and  shall  be  liable  to  be  punished  by 
a  fine  of  500  to  2,000  florins,  or  with  from  three  months  to  a 
year's  imprisonment,  to  which  a  money  penalty  of  2,000  florins 
can  be  added. 

The  simultaneous  employment  of  the  more  stringent  regula- 
tions of  the  general  penal  code,  especially  those  relating  to  the 
crime  of  fraud  (Art.  197,  etc.)  is  not  thereby  excluded.  (Art. 
23.) 

The  regulation  of  Article  23  applies  also  to  those  who  know- 
ingly put  in  circulation,  or  keep  for  sale,  goods  which  are  un- 
authorizedly marked  with  the  name,  firm,  arms,  or  trade  name 
of  the  place  of  business  or  the  manufacturer  or  merchant ;  fur- 
ther, to  those  who  knowingly  fabricate  such  marks.  (Art.  24.) 

The  liability  for  punishment  for  the  acts  enumerated  in  Ar- 
ticles 23  and  24  is  not  avoided  if  the  mark,  name,  firm,  arms, 
business  style  of  the  establishment  be  reproduced  with  so  slight 


AUSTRIA  53 

an  alteration  or  in  such  an  indistinct  manner  that  buyers  can 
only  detect  the  difference  of  the  goods  in  question  from  the  or- 
dinary ones  by  paying  special  attention  thereto.  (Art.  25.) 

The  ordinary  courts  shall  be  invoked  for  taking  proceedings 
and  the  passing  of  sentence  for  the  offenses  detailed  in  Articles 
23  and  24. 

An  action  shall  be  commenced  on  the  demand  of  the  injured 
party.  (Art.  26.) 

On  the  application  of  the  injured  party  an  order  can  be  made 
that  the  tools  and  appliances  exclusively  or  specially  used  for 
the  counterfeiting  or  unauthorized  reproduction  shall  be  rendered 
incapable  of  being  used  for  this  purpose,  that  the  stocks  of  coun- 
terfeited marks  and  unauthorizedly  manufactured  labels  shall  be 
destroyed,  and  the  unauthorized  marks  and  labels  removed  from 
goods  found  in  possession  of  the  condemned  persons,  or  from 
the  packages  of  the  same  if  that  should  involve  the  destruction 
of  the  goods. 

The  injured  party  shall  be  further  authorized  to  publicly  make 
known  the  judgment  against  the  inf ringer  at  the  expense  of  the 
latter.  The  mode  of  publication  as  well  as  the  duration  of  the 
same  is  to  be  fixed  in  the  decision  after  consideration  of  the 
proposals  of  the  injured  party. 

On  the  application  of  the  injured  party,  instead  of  the  com- 
pensation due  to  him  on  his  private  rights,  in  addition  to  the 
penalty,  a  monetary  fine  to  the  amount  of  5,000  florins,  to  be 
handed  to  the  injured  party,  can  be  decreed  by  the  Court  of 
Justice,  the  amount  to  be  fixed  after  free  and  careful  considera- 
tion of  all  the  circumstances. 

Persons  sentenced  to  pay  a  monetary  fine  can  be  arrested  as 
separate  debtors. 

The  rules  of  this  paragraph  shall  apply  even  if  the  punish- 
ment takes  place  under  the  stricter  regulations  of  the  general 
penal  code.  (Art.  27.) 

The  injured  party  is  entitled,  even  before  the  punitive  judg- 
ment is  decreed,  to  demand  the  confiscation  or  seizure  of  the 
articles  enumerated  in  Article  27,  paragraph  1,  also  to  make  an 
application  that  the  necessary  measures  shall  be  taken  for  the 
purpose  of  preventing  a  repetition  of  the  punishable  offense. 

The  court  shall  adjudicate  immediately  on  this  application,  and 
it  shall  also  be  optional  for  it  only  to  authorize  the  desired  confis- 
cation or  arrest,  as  well  as  the  other  measures  desired,  against 
security  to  be  given  by  the  injured  party.  (Art.  28.) 

Should  the  injured  party  demand,  for  any  of  the  offenses  de- 
scribed in  Articles  23  and  24,  the  grant  of  compensation  through 
a  civil  court,  the  latter  shall  decide  both  as  to  the  right  to  com- 
pensation, as  well  as  the  amou/it  of  the  same,  after  due  con- 
sideration of  all  the  circumstances.  (Art.  29.) 


54  AUSTRIA 

The  Minister  of  Commerce  shall  decide  the  point  whether  the 
exclusive  right  of  user  of  a  mark  belongs  to  a  person,  also  as  to 
the  priority  and  transfer  of  this  right,  and  also  whether  a  reg- 
istered mark  shall  be  used  by  another  party  for  a  different  class 
of  goods.  (Art.  7.) 

Should  it  appear,  in  the  course  of  legal  proceedings  in  any  of 
the  cases  enumerated  in  Article  23  that  a  decision  of  a  question  is 
pending,  upon  which,  under  the  first  paragraph  of  this  Article  30, 
the  Minister  of  Commerce  has  to  adjudicate,  the  Criminal  Court 
shall,  after  submitting  the  necessary  documents  to  the  Minister 
in  question,  request  him  to  decide  this  question  first  and  shall 
await  the  notice  of  same.  (Art.  30.) 

Contraventions  of  the  regulations  set  forth  in  Article  6  shall 
be  punished  by  the  usual  Courts  in  accordance  with  regulations 
of  the  industrial  law,  in  which  the  forfeiture  of  the  goods  in 
question  is  always  decreed.  (Art.  31.) 

Marks  Relating  to  Business  Outside  Austria. 

As  regards  the  protection  of  marks,  as  well  as  of  names,  firms, 
arms,  or  trade  names  of  houses  belonging  to  foreign  business 
this  takes  place  in  accordance  with  the  treaties  or  conventions 
concluded  with  the  states  in  question. 

The  regulations  of  the  customs  and  commercial  union  shall 
decide  under  what  conditions  marks  registered  in  the  territory 
of  the  Royal  Hungarian  crown,  and  also  names,  firms,  coats  of 
arms,  or  trade  designations  of  establishments  of  manufacturers 
or  merchants  of  that  country,  shall  share  in  the  protection 
secured  by  this  law.  (Art.  32.) 

Descriptive  Terms  in  Austria. 

The  English  words  "gentleman"  and  "lady"  have  been  held 
to  be  unregistrable  in  Austria  because  of  their  descriptive  mean- 
ing. Application  was  made  to  register  the  word  "gentleman"  as 
a  trade  mark  for  shirts.  The  administrative  court,  in  affirming 
the  decision  of  the  minister  of  public  works  in  refusing  to  reg- 
ister the  mark,  said  that,  while  the  etymological  meaning  of  the 
word  is  not  conclusive  as  deciding  the  registrability  of  the  mark, 
however,  in  the  present  case,  the  word  "gentleman"  has  long 
been  used  in  the  current  speech  to  mean  a  man  of  high  social 
standing  who  is  especially  particular  in  matters  of  dress.  Al- 
though the  word  "gentleman"  could  not  of  course  be  considered 
as  describing  the  goods,  it  would  nevertheless  mean  that  they 
were  of  such  a  quality  as  to  make  them  appropriate  for  gentle- 
men's wear,  and  was  not,  therefore,  a  fanciful  term  within  the 
meaning  of  the  law. 

The  word  "lady"  was  refused  registration  for  similar  reasons 
as  a  trade  mark  for  toilet  creams,  perfumeries,  toilet  soaps,  and 
powder.  (Austrian  Patent-Blatt,  December  1,  1911,  p.  1130.) 


AUSTRIA  55 

The  word  "Hockey"  was  refused  registration  as  a  trade  mark 
for  skates,  on  the  ground  that  it  would  be  regarded  by  the  pur- 
chasing public  as  nothing  less  than  an  indication  that  the  skates 
so  marked  were  to  be  used  in  playing  hockey.  The  allegation  of 
the  applicant  that  the  skates  were  not  especially  made  for  use  in 
hockey  was  not  relevant  to  the  case,  since  the  idea  the  word 
would  convey  to  the  public,  and  not  the  manufacturer's  concep- 
tion of  the  word,  was  to  be  considered  as  conclusive. 

The  sentence  "Shave  Yourself"  was  also  refused  registration 
as  a  trade  mark  for  shaving  and  toilet  requisites,  face  powder 
and  soap.  The  Minister  of  Public  Works  based  his  decision  upon 
the  fact  that  the  sentence  was  one  commonly  used  in  advertising 
razors,  and  therefore,  plainly  indicated  the  nature  of  the  goods, 
without,  however,  indicating  their  origin.  (Austrian  Patent- 
Blatt,  1912,  pp.  10,  11.) 

The  termination  "ol,"  used  so  frequently  in  names  of  proprie- 
tary medicines  and  pharmaceutical  products  has  been  declared 
unregistrable  in  Austria  by  a  recent  decision  of  the  Minister  of 
Public  Works.  The  case  in  question  concerned  the  term  "Conif- 
erol"  as  a  trade  mark  for  products  made  from  pine  and  balsam. 
The  cancellation  of  the  mark  was  decreed  on  the  ground  that 
the  German  termination  "ol"  (English  "oil")  was  so  commonly 
used  in  the  trade  to  designate  the  oils  and  oil  products  of  various 
kinds  that  it  was  clearly  descriptive  of  the  goods.  When  com- 
bined with  the  word  "Conifer,"  it  would  mean  simply  that  the 
oil  in  question  was  made  from  pine  trees.  The  fact  that  several 
other  similar  marks  ending  with  the  same  syllable  "ol"  had 
been  registered,  was  not  deemed  relevant  to  the  case.  (Zeit- 
schrift  fur  Industrierecht,  1911,  p.  144.) 

The  word  "Cavalier"  has  been  refused  registration  as  a  trade 
mark  for  watches  and  parts  thereof  in  a  suit  for  cancellation 
brought  by  a  competing  firm.  The  decision  was  based  upon  the 
almost  unanimous  testimony  of  a  large  number  of  expert  watch- 
makers to  the  effect  that  the  word  "Cavalier"  was  used  to  desig- 
nate a  kind  of  thin  watch  made  for  gentlemen's  use,  and  had 
acquired  a  descriptive  meaning  as  applied  to  these  goods.  (Aus- 
trian Patent-Blatt,  1912,  p.  40.) 

Decisions. 

In  a  circular  addressed  to  the  states  that  participate  in  the 
international  arrangement  for  the  registration  of  trade  marks, 
the  international  bureau  calls  attention  to  a  situation  arising  out 
of  the  domestic  legislation  of  Austria  affecting  trade  marks.  By 
the  terms  of  the  Austrian  law,  when  application  is  made  for  the 
registration  of  a  mark  that  hajr  been  already  registered  in  the 
name  of  another  person,  the  Minister  of  Public  Works  notifies 


56  AUSTRIA 

both  the  parties  concerned,  after  which  they  may  severally  act  as 
they  deem  advisable.  Thus,  the  second  applicant  may  modify  or 
withdraw  his  application,  or  come  to  an  agreement  with  the 
registrant,  or  seek  the  cancellation  of  the  prior  registration. 

In  certain  cases,  owners  of  Austrian  registrations  of  prior  dates 
have  demanded  cancellation  of  the  international  marks  that  were 
in  conflict  with  their  own.  The  Minister  of  Public  Works  then 
gives  to  the  registrant  a  time  within  which  he  may  defend 
against  the  cancellation.  If  the  latter  desires  to  defend,  he 
should  communicate  his  reasons  to  the  State  Minister.  If,  on  the 
contrary,  he  considers  that  the  complainant  is  within  his  right, 
or  if  he  does  not  wish  to  maintain  his  protection  in  Austria,  and 
fails  to  reply,  the  Minister  decrees  the  cancellation  of  his  mark 
by  default,  condemning  him  to  the  payment  of  expenses.  The 
payment  of  expenses  may,  however,  be  avoided  by  voluntarily 
giving  up  the  right  to  the  mark  in  Austria.  (La  Propriete  In- 
dustrielle,  1912,  p.  39.) 

Trade  mark  rights  can  not  be  had  in  the  mere  representation 
of  the  goods  themselves  which  a  mark  is  intended  to  distinguish. 
A  mark  for  pianos,  consisting  merely  of  the  representation  of  a 
piano,  is  not  one  that  will  distinguish  the  goods  of  the  owner  of 
the  mark  from  similar  goods  of  other  make.  Such  a  mark  is 
only  indicative  of  the  nature  and  form  of  the  article,  and  not  of 
its  origin,  and  it  is  one,  therefore,  that  every  manufacturer  of  an 
article  of  similar  nature  and  form  should  be  at  liberty  to  use. 
A  cancellation  of  the  mark  was  decreed. 

The  word  "Automobil"  was  likewise  decreed  to  be  cancelled 
with  respect  to  tape  measures,  machines,  pocket  oilers,  tool  sets, 
rubber  goods,  rubber  bags,  leather  pocket  books,  leather  ware 
and  chemical  products,  for  the  reason  that,  as  applied  to  these 
goods,  it  indicated  that  they  were  accessories  of  automobiles  or 
were  particularly  adapted  to  use  in  connection  with  automo- 
biles. As  applied  to  other  articles,  however,  for  which  the 
mark  was  registered,  it  was  held  to  be  a  purely  fanciful  name, 
the  goods  in  question  having  no  relation  to  automobiles.  (Patent- 
Blatt,  September  1909.) 

The  prosecution  was  instituted  against  one  Fred  Worlicek,  of 
Carlsbad,  for  the  use  of  the  term  "Listerine"  upon  a  product  not 
that  of  the  complainant.  The  defendant  maintained  that  the 
word  had  been  for  many  years  in  pharmacy  regarded  as  descrip- 
tive and  was  public  property  in  the  trade.  The  Court,  however, 
overruled  the  contention  and  sentenced  the  defendant  to  the  pay- 
ment of  a  fine  of  three  hundred  crowns  and  costs,  besides  order- 
ing the  destruction  of  the  labels  and  the  publication  of  the  ver- 
dict at  the  expense  of  the  defendant  in  two  designated  news- 
papers. 

On  an  application  for  the  cancellation  of  certain  trade  marks 
registered  in  Austria  and  consisting  of  the  words  "The  Two 


AUSTRIA  57 

Cross  Guns  Brand  Enamel  Ware,"  and  other  expressions  similar 
in  effect,  it  has  been  held  that  the  earlier  registration  of  a  trade 
mark  consisting  essentially  of  the  representation  of  two  guns 
crossed,  does  not  afford  ground  for  such  cancellation.  In  the 
opinion  of  the  Austrian  Court  of  Appeals  there  can  be  no  con- 
flict between  trade  marks,  the  one  consisting  of  words  only  and 
the  other  consisting  of  a  mere  design.  It  was  maintained  in 
the  complaint  that  the  marks  conflicted,  inasmuch  as  the  word 
marks  conveyed  the  same  idea  as  did  the  design  previously  reg- 
istered, and  that  the  ordinary  purchaser  would  have  difficulty  in 
distinguishing  the  wares  and  would  be  liable  to  confusion  by  rea- 
son of  this  similarity  of  the  marks,  but  this  view  did  not  com- 
mend itself  to  the  Austrian  court.  (Austrian  Patent-Blatt,  1908, 
p.  189.) 

The  Minister  of  Public  Works  of  Austria  has  lately  rendered 
a  decision  cancelling  the  registration  of  a  trade  mark  containing 
the  words  "red  cross"  because  in  violation  of  a  provision  of  the 
Austrian  law.  The  mark  registered,  for  stoves  and  ranges,  was 
in  the  form  of  a  polished  metal  plate,  containing  in  outline  the 
representation  of  a  Maltese  Cross,  and  the  words  "Red  Cross 
Stoves  and  Ranges."  In  spite  of  the  fact  that  the  mark,  as  regis- 
tered and  used,  did  not  involve  the  use  of  the  red  color  in  con- 
nection with  the  representation  of  a  cross,  the  Ministry  held  that 
it  was  a  violation  of  the  law. 

The  contention  that  the  purchaser  of  the  stoves  would  not 
presume  that  there  was  any  connection  between  the  articles  and 
the  Red  Cross  Society,  the  Ministry  held  it  was  not  called  upon 
to  determine,  in  view  of  the  prohibitive  sections  of  the  law  re- 
ferred to,  it  being  immaterial  what  ideas  the  purchaser  of  the 
goods  associated  with  it.  The  fact  that  the  words  were  used  in 
the  English  language,  and  not  in  any  languages  current  in  Aus- 
tria, was  held  not  to  be  a  circumstance  in  support  of  the  registra- 
tion. The  argument  that  the  words  "red  cross"  in  the  English 
language  did  not  commonly  designate  the  insignia  of  the  Society 
of  the  Geneva  Cross,  was  said  to  be  disproven  by  common  usage 
of  the  term  in  the  United  States. 

As  to  the  claim  that  the  mark  was  entitled  to  be  registered 
under  the  treaty  between  Austria-Hungary  and  the  United  States, 
it  having  been  first  registered  in  the  United  States,  the  Ministry 
said  that  this  treaty  secures  to  American  citizens  no  more  pro- 
tection in  Austria  than  is  accorded  to  citizens  of  that  country. 
That  is  to  say,  it  secures  reciprocity,  by  virtue  of  which  each  of 
the  contracting  parties  is  bound  to  treat  the  citizens  of  the  other 
country  in  a  manner  precisely  similar  to  its  own  citizens  in  so 
far  as  trade  mark  protection  is  concerned.  This,  however,  does 
not  secure  to  citizens  of  the  United  States  in  Austria  greater 
rights  than  citizens  of  Austria  ^fre  enabled  to  claim  in  their  own 
country. 


58  AUSTRIA 

The  right  to  a  mark  may  be  lost  by  the  use  of  statements  con- 
tained therein,  indicating  falsely  the  origin  of  the  goods.  Where 
a  mark  contains  the  word  "Qualite  Francaise"  in  connection  with 
other  words,  all  in  the  French  language,  they  will  be  understood 
by  the  consumer  to  indicate  that  the  goods  are  of  French  origin, 
there  being  no  indication  of  the  actual  place  of  manufacture  of 
the  goods.  Such  false  statements  invalidate  the  mark.  (Zeit- 
schrift  fur  Industrierecht,  1906,  pp.  224,  236.) 

The  word  "Tuberkulem"  as  a  trade  mark  for  soap  and  soap 
powder  is  not  registrable.  Registration  is  refused  upon  the 
ground  that  it  will  be  presumed  that  the  goods  protected  by  the 
word  are  of  value  in  preventing  the  disease  known  as  "Tuber- 
culosis" or  that  the  use  of  such  soap  is  recommended  to  persons 
who  come  in  contact  with  the  disease.  Held,  that  the  nullifica- 
tion of  the  trade  mark  should  be  decreed.  (Austrian  Patent- 
Blatt,  May  15,  1907.) 

Prior  Use. 

Unlike  that  of  some  European  states,  notably  Germany,  in 
which  the  right  of  the  registrant  of  a  trade  mark  is  conclusive, 
irrespective  of  prior  use  by  another,  the  law  of  Austria  provides 
for  the  cancellation  of  a  mark  registered  in  violation  of  the  rights 
of  one  who  has  previously  used  it  in  Austria.  In  a  late  case  the 
right  of  a  Swiss  house  to  demand  cancellation  of  its  mark  regis- 
tered in  Austria  by  another  came  in  question.  The  mark  had 
been  registered  in  Switzerland  by  its  lawful  owner,  but  not  in 
Austria.  It  had,  however,  been  used  in  the  latter  country  for 
some  years  prior  to  its  wrongful  registration  by  the  defendant. 
The  defendant  was  the  former  agent  of  the  plaintiff  in  Galicia, 
and  had  sold  there  the  watches  and  watch  cases  of  the  plaintiff's 
predecessor,  bearing  its  trade  mark  "Omega."  The  plaintiff,  a 
corporation,  was  organized  to  take  over  the  business  of  a  co-part- 
nership of  the  same  name  on  May  14,  1903,  and  on  May  19,  1903, 
the  trade  mark,  registered  in  Switzerland  in  the  name  of  the  co- 
partnership, was  transferred  to  the  corporation. 

The  agent,  by  way  of  defense,  relied  upon  the  contention  that 
in  order  to  avail  themselves  of  the  remedies  provided  by  the  Aus- 
trian law,  the  plaintiffs  must  have  registered  their  mark  in  Aus- 
tria, claiming  that  under  the  convention  between  Switzerland  and 
Austria,  providing  for  the  reciprocal  protection  of  trade  marks 
belonging  to  the  subjects  of  the  several  countries,  no  protection 
was  accorded  in  Austria  to  the  subjects  of  Switzerland  unless 
they  should  have  registered  their  marks  in  the  former  country. 
The  Minister  of  Commerce,  however,  held  that  as  the  law  of 
Austria  afforded  protection  in  a  similar  case  to  a  native  of  Aus- 
tria, under  Section  1  of  the  convention,  which  required  that  citi- 
zens of  Switzerland  should  enjoy  in  Austria  the  same  protection 
as  its  subjects,  the  government  of  Austria  was  bound  to  extend 


AUSTRIA  59 

to  Swiss  subjects  the  benefit  of  the  protection  which  their  law 
would  afford  to  their  own  citizens,  and  to  sustain  an  action 
brought  in  the  proper  case  for  the  cancellation  of  the  registra- 
tion wrongfully  made. 

In  the  case  in  question  it  was  held  that  the  plaintiffs  had  made 
out  their  right  to  relief,  because  they  had  shown  by  satisfactory 
evidence  that  the  mark  at  the  time  it  was  registered  by  the  de- 
fendant was  regarded  in  Austria  among  the  trade  and  those  en- 
gaged in  the  handling  of  that  class  of  goods  as  indicative  of  the 
products  of  the  plaintiffs.  The  defendant  claimed  that  the  mark 
was  known  as  his  own  and  understood  to  indicate  his  goods.  It 
is  interesting  to  note  that,  for  the  purpose  of  determining  this 
disputed  question  of  fact,  the  Minister  of  Commerce  took  the 
opinion  of  Chambers  of  Commerce  in  various  cities  of  Austria  as 
to  the  goods  indicated  by  the  mark  at  the  time  of  its  registration 
by  the  defendant,  and  decided  on  the  evidence  submitted  that  the 
mark  was  known  as  the  designation  of  the  plaintiff's  goods. 

The  defendant  further  claimed,  that  inasmuch  as  the  mark  had 
never  been  used  by  the  plaintiff  in  Austria  at  the  time  of  bringing 
the  action,  but  only  by  its  predecessors,  and  inasmuch  as  there 
was  nothing  in  the  Austrian  law  to  secure  to  the  assignee  of  the 
trade  mark  a  right  of  action  in  this  case,  the  plaintiff  was  without 
standing  in  the  court.  The  Minister,  however,  said  that  the  law 
recognized  the  right  of  the  assignee  in  general  and  that  if  it 
did  not  expressly  provide  for  a  case  of  this  sort,  it  was  because 
the  right  of  the  assignee  to  sustain  the  action  was  so  obvious  that 
the  legislature  considered  it  as  necessarily  following  from  the 
relation  between  the  parties  and  that  the  omission  was  not  to  be 
construed  as  negativing  the  right  to  such  an  action. 

Right  to  Register. 

A  trade  mark  to  be  registered  in  Austria  must  be  applied  for 
in  connection  with  goods  'related  to  the  business  of  the  applicant. 
Application  was  made  to  register  certain  marks  for  substitutes 
for  cocoa  and  coffee.  The  business  of  the  applicant  was,  how- 
ever, the  manufacture  and  sale  of  margarine.  The  Minister  of 
Public  Works  held  that  the  production  of  a  substitute  for  cocoa 
and  coffee  had  no  relation  to  a  business  of  the  character  men- 
tioned. 

Since  the  mark  is  intended  to  distinguish  the  goods  of  the 
applicant  from  the  goods  of  others,  and  since  the  right  to  a  mark 
can  have  no  existence  independent  of  a  business  the  products  of 
which  are  to  be  designated  by  the  mark,  the  registration  of  a 
mark  for  goods  which  are  really  not  manufactured  by  the  ap- 
plicant, and,  from  the  nature  of  his  business,  cannot  be  manufac- 
tured by  him,  is  not  permitted  If  the  applicant  affirms  her 
statement  made  to  the  chamber  of  commerce  in  Reichenberg,  that 


60  BAHAMA  ISLANDS 

she  does  not  plan  to  take  up  in  any  way  the  manufacture  of  a 
substitute  for  cocoa  and  coffee,  and  wants  the  concession  only 
in  case  she  should  later  engage  in  the  manufacture  and  sale  of 
the  goods,  then  it  must  be  noted  that  trade  marks  for  an  under- 
taking not  yet  in  progress  can  be  secured  only  if  at  the  time  of 
application  some  real  preparations  for  the  establishment  of  the 
business  is  still  in  prospect.  Moreover,  the  words,  "Moorish 
Cocoa,"  which  it  is  desired  to  register,  are  designed  to  create  in 
the  minds  of  the  consumers  the  belief  that  it  makes  genuine  cocoa, 
and  not  merely  a  substitute  for  it,  and  thus  confusion  would 
arise  in  the  minds  of  the  general  public.  (Zeitschrift  fur  In- 
dustrierecht,  1912,  p.  154.) 


BAHAMA  ISLANDS 

The  Bahama  Islands  form  an  archipelago  of  coral  limestone, 
extending  in  an  irregular  line  from  Southeast  Florida  to  Hayti 
and  Santo  Domingo.  There  are  about  twenty  inhabited  islands, 
and  an  immense  number  of  islets  and  rocks ;  the  total  area  is 
4,466  square  miles.  The  principal  island  is  New  Providence, 
which  contains  the  capital,  Nassau.  The  total  area  of  the  nine- 
teen principal  islands  is  4,424  square  miles ;  Andros  is  the  larg- 
est, and  contains  1,600  squar.e  miles. 

The  population  of  the  islands  in  1911  (Dec.  31st)  was  esti- 
mated at  70,000. 

EXPORTS — The  principal  articles  of  export  are  sponges,  pine- 
apples, also  oranges,  grape-fruit,  shaddock,  bananas,  cocoanuts, 
dye-wood,  Bahama  hemp  (sisal),  turtle  shell,  conchshells  and 
small  shells.  The  following  varieties  of  wood  are  also  exported, 
viz,  braziletto,  cedar,  ebony,  lignum  vitae,  logwood,  madeira,  ma- 
hogany, sabica,  satin  wood  and  bark  (cascarilla). 

SPONGE  INDUSTRY — Sponge  fishing  is  carried  on  to  a  con- 
siderable extent.  It  is  estimated  that  there  is  engaged  in  this 
industry  a  fleet  of  about  500  vessels,  with  aggregate  tonnage  of 
5,185,  with  boats  attached  numbering  2,463;  the  number  of  per- 
sons employed  is  about  5.000.  Value  of  exports,  for  the  year 
1909,  was  £87,657. 

The  ports  of  entry  in  the  Bahamas  are  as  follows: — Nassau, 
Green  Turtle  Cay  and  Hope  Town,  Abaco,  Bimini,  Governor's 
Harbour,  Eleuthera,  Harbour  Island,  Exuma,  Rum  Cay,  Long 
Island,  Long  Cay,  Inagua,  Ragged  Island,  San  Salvador  and 
Watlings  Island. 

The  whole  trade  from  North  America  and  Europe  to  the  Gulf 
of  Mexico  passes  by  the  north  of  these  islands.  Steamers  bound 
south  stem  the  rapid  current  of  the  Florida  channel.  Sailing  ves- 
sels pass  between  Abaco  and  Eleuthera,  through  the  Providence 


BAHAMA  ISLANDS  61 

channels,  within  40  miles  of  Nassau,  into  the  Gulf  of  Florida. 
All  the  trade  from  North  America  to  the  eastern  parts  of  Cuba, 
to  Jamaica,  the  Gulf  of  Honduras,  and  the  northern  coasts  of 
South  America,  passes  southward  to  windward  of  the  group,  and 
close  to  the  shore  of  Inagua.  The  return  trade,  and  all  the  Eu- 
ropean trade  from  the  same  countries,  passes  north,  either 
through  the  Crooked  Island  passage  or  the  Mayaguana  or  Caicos 
channels.  The  Bahamas  therefore  lie  in  the  tracks  of  two  great 
streams  of  trade. 

MONEY,  WEIGHTS  AND  MEASURES — Same  as  Great  Britain. 

Law. 
Date  of  law,  May  29,  1906. 

Duration  of  Registration. 

The  registration  of  a  trade  mark  shall  be  for  fourteen  years, 
but  may  be  renewed  from  time  to  time.  (Art.  27.) 

What  May  Be  Registered. 

A  registrable  trade  mark  must  contain  or  consist  of  at  least 
one  of  the  following  essential  particulars : 

1.  The   name  of  a  company,   individual,  or  firm   represented 
in  a  special  or  particular  manner ; 

2.  The  signature  of  the  applicant  for  registration  or  some  pre- 
decessor in  his  business ; 

3.  An  invented  word  or  invented  words; 

4.  A  word  or  words  having  no  direct  reference  to  the  char- 
acter or  quality  of  the  goods,  and  not  being  according  to  its  or- 
dinary signification  a  geographical  name  or  a  surname : 

5.  Any  other  distinctive  mark,  but  a  name,  signature  or  word 
or  words,  other  than  such  as  fall  within  the  description  in  the 
above  paragraphs   (1),   (2),   (3)   and   (4)   shall  not,  except  by 
order  of  the  court,  be  deemed  a  distinctive  mark. 

Requirements. 

Power  of  attorney,  six  copies  of  the  mark  and  electrotype. 
(Form  for  application  may  be  obtained  from  B.  Singer's  offices.) 

Mode  of  Application. 

If  the  application  for  registration  of  a  trade  mark  be  made  by 
a  firm  or  partnership  it  may  be  signed  in  the  name  or  for  and  on 
behalf  of  the  firm  or  partnership  by  any  one  or  more  members 
thereof. 

If  the  application  be  made  by  a  body  corporate  it  may  be  signed 
by  a  director  or  by  the  secretary  or  other  principal  officer  of 
such  body  corporate. 


62  BAHAMA  ISLANDS 

Any  application  may  be  signed  by  an  agent. 

On  or  after  the  receipt  of  the  application  the  Registrar  shall 
furnish  the  applicant  with  an  acknowledgment  thereof. 

Every  application  for  registration  of  a  trade  mark  shall  con- 
tain a  representation  of  the  mark  affixed  to  it  in  the  square  which 
"Form  No.  2"  contains  for  that  purpose. 

Where  the  representation  in  the  preceding  Rule  mentioned  ex- 
ceeds such  square  in  size  the  representation  shall  be  mounted  on 
linen,  tracing  cloth  or  other  material  that  the  Registrar  may  con- 
sider suitable.  Part  of  the  mounting  shall  be  affixed  in  the  space 
aforesaid  and  the  rest  may  be  folded  over. 

There  shall  be  sent  with  every  application  for  registration  of  a 
trade  mark  four  additional  representations  of  such  mark  on 
"Form  No.  3"  exactly  corresponding  to  that  affixed  to  the  ap- 
plication (Form  No.  2)  and  noted  with  all  such  particulars  as 
may  from  time  to  time  be  required  by  the  Registrar. 

The  particulars  above  mentioned  shall,  if  required,  be  signed 
by  the  applicant  or  his  agent. 

Applications  for  the  registration  of  the  same  mark  in  different 
classes  shall  be  treated  as  separate  and  distinct  applications,  and 
in  all  cases  in  which  a  trade  mark  is  registered  under  the  same 
official  number  for  goods  in  more  than  one  class,  the  registration 
shall  henceforth  for  the  purpose  of  fees  and  otherwise  be  deemed 
to  have  been  made  on  separate  and  distinct  applications  in  re-, 
spect  of  the  goods  included  in  each  class. 

The  Registrar  may  also,  in  exceptional  cases,  deposit  in  the 
office  a  specimen  or  copy  of  any  trade  mark  which  cannot  con- 
veniently be  shown  by  a  ^representation,  and  may  refer  thereto  in 
the  register  in  such  manner  as  he  may  think  fit. 

Upon  receipt  of  an  application  for  registration  the  Registrar 
shall  cause  a  search  to  be  made  amongst  the  registered  marks 
and  pending  applications  for  the  purpose  of  ascertaining  whether 
there  are  on  record  any  marks  for  the  same  goods  or  description 
of  goods  identical  with  the  mark  applied  for  or  so  nearly  resem- 
bling it  as  to  be  calculated  to  deceive. 

If  after  such  search  and  consideration  of  the  application  any 
objections  appear,  a  statement  of  those  objections  shall  be  sent 
to  the  applicant  in  writing,  and  unless  within  one  month  the 
applicant  applies  for  a  hearing,  he  shall  be  deemed  to  have  with- 
drawn his  application. 

If  the  Registrar  accepts  an  application  subject  to  any  condi- 
tions, amendments,  or  modifications,  and  the  applicant  objects  to 
such  conditions,  amendments,  or  modifications,  he  shall  within 
one  month  from  the  date  of  the  communication  notifying  such 
acceptance  apply  for  a  hearing,  and  if  he  does  not  do  so  he  shall 
be  deemed  to  have  withdrawn  his  application.  If  the  applicant 
does  not  object  to  such  conditions,  amendments,  or  modifications, 
he  shall  forthwith  notify  the  Registrar  in  writing. 


BAHAMA  ISLANDS  63 

The  decision  of  the  Registrar  at  such  hearing  as  aforesaid  shall 
be  communicated  to  the  applicant  in  writing,  and  if  he  objects 
to  such  decision  he  may  within  one  month  apply  upon  "Form  No. 
4"  requiring  the  Registrar  to  state  in  writing  the  grounds  of  his 
decision  and  the  materials  used  by  him  in  arriving  at  the  same. 

Upon  receipt  of  such  form  the  Registrar  shall  send  to  the  ap- 
plicant such  statement  as  aforesaid  in  writing,  and  the  date  when 
such  statement  is  sent  shall  be  deemed  to  be  the  date  of  the  Regis- 
trar's decision  for  the  purpose  of  appeal. 

The  Registrar  may  call  on  an  applicant  to  insert  in  his  applica- 
tion such  disclaimer  as  the  Registrar  may  think  fit,  in  order  that 
the  public  generally  may  understand  what  the  applicant's  rights, 
if  his  mark  is  registered,  will  be. 

Opposition. 

Any  person  may  within  one  month  from  the  date  of  any  ad- 
vertisement in  the  Journal  of  an  application  for  registration  of 
a  trade  mark  give  notice  in  writing  at  office  of  opposition  to  the 
registration. 

Within  one  month  from  the  receipt  of  such  duplicate  the  ap- 
plicant shall  send  to  the  Registrar  a  counterstatement  (Form  No. 
8)  in  writing  setting  out  the  grounds  on  which  he  relies  as  sup- 
porting his  application.  The  applicant  shall  also  set  out  what 
facts,  if  any,  alleged  in  the  Notice  of  Opposition  he  admits. 
Such  counterstatement  shall  be  accompanied  by  a  duplicate  in 
writing. 

Where  a  party  giving  notice  of  opposition  neither  resides  nor 
carries  on  business  in  the  colony,  the  Registrar  may  call  upon 
him  to  give  a  security  in  such  form  as  the  Registrar  may  deem 
sufficient  for  the  costs  of  the  proceedings  before  the  Registrar, 
for  such  amount  as  the  Registrar  may  see  fit,  and  at  any  stage 
in  such  opposition  may  require  further  security  to  be  given  at 
any  time  before  giving  his  decision  in  the  case. 

Assignments. 

A  trade  mark  when  registered  shall  be  assigned  and  trans- 
mitted only  in  connection  with  the  good-will  of  the  business  con- 
cerned in  the  goods  for  which  it  has  been  registered  and  shall  be 
determinable  with  that  good-will.  But  nothing  in  this  section 
contained  shall  be  deemed  to  affect  the  right  of  the  proprietor  of 
a  registered  trade  mark  to  assign  the  right  to  use  the  same  in 
any  British  possession  or  protectorate  or  foreign  country  in  con- 
nection with  any  goods  for  which  it  is  registered  together  with 
the  good-will  of  the  business  therein  in  such  goods.  (Art.  21.) 

Series  of  Trade  Marks. 

When  a  person  claiming  to  be- the  proprietor  of  several  trade 
marks  for  the  same  description  01  goods  which,  while  resembling 


64  BAHAMA  ISLANDS 

each  other  in  the  material  particulars  thereof,  yet  differ  in  respect 
of — 

(a)  Statements  of  the  goods  for  which  they  are  respectively 
used  or  proposed  to  be  used ;  or 

(6)  Statements  of  number,  price,  quality,  or  names  of  places; 
or 

(c)  Other  matter  of  a  non-distinctive  character  which  does 
not  substantially  affect  the  identity  of  the  trade  mark ;  or 

(d}  Color, 

seeks  to  register  such  trade  marks,  they  may  be  registered  as  a 
series  in  one  registration.  All  the  trade  marks  in  a  series  of 
trade  marks  so  registered  shall  be  deemed  to  be,  and  shall  be  reg- 
istered as,  associated  trade  marks.  (Art.  25.) 

Associated  trade  marks  shall  be  assignable  or  transmissible 
only  as  a  whole  and  not  separately,  but  they  shall  for  all  other 
purposes  be  deemed  to  have  been  registered  as  separate  trade 
marks.  Provided  that,  where  under  the  provisions  of  this  Act 
user  of  a  registered  trade  mark  is  required  to  be  proved  for  any 
purpose,  the  tribunal  may,  if  and  so  far  as  it  shall  think  right, 
accept  user  of  an  associated  registered  trade  mark,  or  of  the 
trade  mark  with  additions  or  alterations  not  substantially  affect- 
ing its  identity,  as  an  equivalent  for  such  user. 

Infringement. 

No  person  shall  be  entitled  to  institute  any  proceeding  to  pre- 
vent or  to  recover  damages  for  the  infringement  of  an  unregis- 
tered trade  mark.  (Art.  40.) 

In  an  action  for  the  infringement  of  a  trade  mark  the  Court 
trying  the  question  of  infringement  shall  admit  evidence  of  the 
usages  of  the  trade  in  respect  to  the  get-up  of  the  goods  for 
which  the  trade  mark  is  registered,  and  of  any  trade  marks  or 
get-up  legitimately  used  in  connection  with  such  goods  by  other 
persons.  (Art.  4i.) 

Penalty  on  Falsely  Representing  a  Trade  Mark. 

Any  person  who  represents  a  trade  mark  as  registered  which 
is  not  so  shall  be  liable  for  every  offense  on  summary  conviction 
to  a  fine  not  exceeding  five  pounds. 

Any  person  shall  be  deemed  for  the  purposes  of  this  enact- 
ment, to  represent  that  a  trade  mark  is  registered  if  he  uses  in 
connection  with  the  trade  mark  the  word  "registered"  or  any 
words  expressing  or  implying  that  registration  has  been  obtained 
for  the  trade  mark. 

Selling  Goods. 

Every  person  who  sells,  or  exposes  for  sale,  or  has  in  his  pos- 
session for  sale,  or  any  purpose  of  trade  or  manufacture,  any 


BAHAMA  ISLANDS  65 

goods  or  things  to  which  any  forged  trade  mark  is  applied,  or  to 
which  any  trade  mark  or  mark  so  nearly  resembling  a  trade  mark 
as  to  be  calculated  to  deceive  is  falsely  applied,  as  the  case  may 
be,  shall  be  guilty  of  an  offense  against  this  Act,  unless  he 
proves — 

(a)  That  having  taken  all  reasonable  precautions  against  com- 
mitting an  offense  against  this  Act,  he  had  at  the  time  of  the 
commission  of  the  alleged  offense  no  reason  to  suspect  the  gen- 
uineness of  the  trade  mark;  and 

(&)  That  on  demand  by  or  on  behalf  of  the  prosecutor  he  gave 
all  the  information  in  his  power  with  respect  to  the  persons  from 
whom  he  obtained  such  goods  or  things ;  or 

(c)  That  otherwise  he  acted  innocently. 

Forging  or  Falsely  Applying  Trade  Marks. 

Every  person  who 

(a)   Forges  any  trade  mark;  or 

(&)  Falsely  applies  to  goods  any  trade  mark  or  any  mark  so 
nearly  resembling  a  trade  mark  as  to  be  calculated  to  deceive, 
shall,  unless  he  proves  that  he  acted  without  intent  to  defraud, 
be  guilty  of  an  offense  against  this  Act. 

A  person  shall  be  deemed  to  forge  a  trade  mark  who  either 

(a)  Without  the  assent  of  the  proprietor  of  the  trade  mark 
makes  that  trade  mark  or  a  mark  so  nearly  resembling  that  trade 
mark  as  to  be  calculated  to  deceive ;  or 

(&)  Falsifies  any  genuine  trade  mark  whether  by  alteration, 
addition,  effacement  or  otherwise. 

Any  trade  mark  or  mark  so  made  or  falsified  is  in  this  Act  re- 
ferred to  as  a  forged  trade  mark ; 

Provided  that  in  any  prosecution  for  forging  a  trade  mark  the 
burden  of  proving  assent  of  the  proprietor  shall  lie  on  the  de- 
fendant. 

A  person  shall  be  deemed  to  apply  a  trade  mark  or  mark  to 
goods  who 

(a)  Applies  it  to  the  goods  themselves ;  or 

(&)  Applies  it  to  any  covering,  label,  reel  or  other  thing  in  or 
with  which  the  goods  are  sold  or  exposed  or  had  in  possession 
for  any  purpose  of  sale,  trade  or  manufacture ;  or 

(c)  Places,  encloses,  or  annexes  any  goods  which  are  sold  or 
exposed  or  had  in  possession  for  any  purpose  of  sale,  trade  or 
manufacture,  in,  with,  or  to  any  covering,  label,  reel,  or  other 
thing  to  which  a  trade  mark  has  been  applied ;  or 

(d)  Uses  a  trade  mark  or  mark  in  any  manner  calculated  to 
lead  to  the  belief  that  the  goods  m  connection  with  which  it  is 
used  are  designated  by  that  trade  mark  or  mark. 


66  BARBADOS 

Punishment  of  Offense. 

Any  person  guilty  of  an  offense  against  this  Act  shall  be  liable 
on  summary  conviction  to  a  penalty  not  exceeding  £50  and  to  the 
forfeiture  of  all  goods  in  respect  of  which  the  offense  is  com- 
mitted. 

Classification. 

Same  as  Great  Britain. 


BARBADOS 

This  is  a  colony  of  the  British  Empire,  and  is  the  most  east- 
ern of  the  Antilles  or  Caribbean  islands.  The  extreme  length  is 
about  21  miles,  and  the  extreme  breadth  about  1-4  miles,  it  hav- 
ing an  area  of  about  16G  square  miles.  The  estimated  popula- 
tion in  1911  (Dec.  31st)  was  240,000. 

The  entire  industry  of  the  island  may  be  said  to  be  the  grow- 
ing of  sugar  cane,  and  its  principal  exports  are  sugar  and  mo- 
lasses. Within  the  past  few  years  a  species  of  glance  pitch, 
locally  called  "manjak,"  has  been  mined  and  largely  exported  to 
Europe  and  the  United  States.  Cotton  is  now  being  grown,  and 
the  export  during  1911  was  valued  at  £40,946. 

The  total  imports  during  1911  were  valued  at£l,119,344,  and 
the  total  exports  were  valued  at  £888,086. 

MONEY,  WEIGHTS  AND  MEASURES — Same  as  Great  Britain. 

Laws. 

Merchandise  Marks  Act  1889.  Merchandise  Marks  Act 
amended  March  20,  1896. 

Duration. 

Fourteen  years,  renewable. 

What  May  Be  Registered. 

A  trade  mark  must  consist  of  or  contain  at  least  one  of  the 
following  essential  particulars:  (a)  a  name  of  an  individual  or 
firm  printed,  impressed,  woven  or  blown  in  glass;  or  (&)  a  writ- 
ten signature  or  copy  of  a  written  signature  of  the  individual  or 
firm  applying  for  registration  thereof  as  a  trade  mark;  or  (c) 
a  distinctive  device,  mark,  brand,  heading,  label,  ticket  or  fancy 
word  or  words  not  in  common  use. 

There  may  be  added  to  any  one  or  more  of  these  particulars 
any  letters,  words  or  figures  or  combination  of  letters,  words  or 
figures  or  any  of  them. 


BARBADOS  67 

Restrictions  on  Registration. 

1.  Where  a  court  of  law  or  equity  has  decided  that  two  or 
more  persons  are  entitled  to  be  registered  as  proprietors  of  the 
same  trade  mark,  the  Registrar  shall  not  register  in  respect  of 
the  same  goods  or  a  description  of  goods  a  trade  mark  identical 
with  the  one  already  on  the  register  with  respect  to  such  goods 
or  descriptions  of  goods. 

2.  The  Registrar  shall  not  register  with  respect  to  the  same 
goods  or  description  of  goods  a  trade  mark  so  nearly  resembling 
a  trade  mark  already  on  the  register  with  respect  to  such  goods 
or  description  of  goods  as  to  be  calculated  to  deceive. 

3.  It  shall  not  be  lawful  to  register  as  part  of  or  in  combina- 
tion with  a  trade  mark  any  words  the  exclusive  use  of  which 
would  by  reason  of  their  being  calculated  to  deceive  or  other- 
wise be  deemed  disentitled  to  protection  in  a  court  of  justice,  or 
any  scandalous  design.     (Art.  12.) 

Application  for  Registration. 

Application  for  registration  must  be  made  to  the  Registrar 
who  shall  advertise  in  the  Official  Gazette  and  one  of  the  news- 
papers of  this  island  a  notice  in  the  form  set  forth  in  the  schedule 
of  this  Act,  and  such  notice  shall  be  advertised  in  three  consecu- 
tive numbers  of  the  Official  Gazette  and  such  newspaper,  but  the 
Registrar  shall  not  insert  such  advertisement  till  the  per- 
son making  the  application  shall  deposit  with  the  Registrar  the 
sums  to  be  charged  by  the  Official  Gazette  and  such  newspaper 
for  inserting  such  advertisement. 

Opposition  to  Registration. 

1.  If  no  notice  of  opposition  to  the  registration  of  such  trade 
mark  shall  be  left  with  the  Registrar  at  his  office  within  one 
month  of  the  first  advertisement  of  the  application  in  the  Official 
Gazette  then  the  Registrar  shall  register  such  trade  mark  in  the 
name  of  the  person  by  or  on  behalf  of  whom  such  application  is 
made. 

2.  Any  person  may  within  one  month  of  the  first  advertise- 
ment of  the  application  give  notice  in  duplicate  at  the  office  of  the 
Registrar,  of  opposition  to  the  registration  of  the  trade  mark  and 
the  Registrar  shall  send  one  copy  of  such  notice  to  the  applicant. 

3.  Within  fourteen  days  after  receipt  of  such  notice  the  appli- 
cant may  send  to  the  Registrar  at  his  office  a  counterstatement  in 
duplicate  of  the  grounds  on  which  he  relies  for  his  application, 
and  if  he  does  not  do  so  shall  be  deemed  to  have  abandoned  his 
application. 

4.  If  the  applicant  send  such-counterstatement  the  Registrar 
shall  furnish  a  copy  thereof  to  the  person  who  gave  notice  of 


68  BELGIUM 

opposition  and  shall  require  him  to  give  security  in  such  man- 
ner and  to  such  amount  as  the  Registrar  may  require  for  such 
costs  as  may  be  awarded  in  respect  of  such  opposition,  and  if 
such  security  is  not  given  within  fourteen  days  after  such  re- 
quirement was  made  the  opposition  shall  be  deemed  to  be 
withdrawn  and  the  Registrar  shall  register  such  trade  mark  in 
the  name  of  the  person  by  or  on  behalf  of  whom  such  application 
is  made. 

5.  If  the  person  who  gave  notice  of  opposition  duly  gives 
such  security  as  aforesaid  the  Registrar' shall  inform  the  applicant 
thereof  in  writing  and  thereupon  the  case  shall  be  deemed  to 
stand  over  till  the  same  has  been  decided  by  some  court  of  law  or 
equity. 

Assignment  and  Registration  of  Assignment. 

A  trade  mark  when  registered  shall  be  assigned  and  transmit- 
ted only  in  connection  with  the  good  will  of  the  business  con- 
cerned in  the  particular  goods  or  classes  of  goods  for  which  it 
has  been  registered  and  shall  be  determinate  with  that  good 
will. 

The  assignment  or  transmission  of  every  .registered  trade 
mark  shall  be  entered  on  the  register  by  the  person  claiming 
under  transmission  or  assignment  and  such  person  shall  not  be 
entitled  to  the  protection  afforded  by  this  Act  till  such  entry 
shall  be  made. 

Classification. 

Is  the  same  as  in  Great  Britain. 

A  trade  mark  must  be  registered  for  particular  goods  or  classes 
of  goods. 

Requirements. 

Power  of  attorney;  six  copies  of  the  mark  and  electrotype. 
(Form  for  application  may  be  obtained  from  B.  Singer's  offices.) 


BELGIUM 

The  kingdom  of  Belgium  has  an  area  of  11,373  English  square 
miles  (or  less  than  one-fifth  the  extent  of  England)  and  a  pop- 
ulation in  December,  1911,  of  7,610,591.  It  consists  of  nine  prov- 
inces, viz.:  Anvers,  Brabant,  Flandre  Occidentale,  Flandre 
Orientale,  Hainaut,  Liege,  Limbourg,  Luxembourg,  Namur. 

COMMERCE — Belgium  is  to  a  large  extent  an  agricultural  coun- 
try, and  produces  in  addition  to  the  cereal  crops,  sugar,  beets  and 
cattle. 

The  manufactures  may  be  said  to  embrace  every  commodity 
that  the  country  requires,  but  among  these  should  be  especially 
mentioned  lace,  edge  tools,  iron  manufactures,  locomotive  and 


BELGIUM  69 

other  steam  engines,  arms,  bronzes,  porcelain,  glass,  cement, 
etc. 

This  country  is  enormously  rich  in  minerals.  Its  coal  regions 
extend  over  an  immense  field  and  give  employment  to  over  140,- 
000  miners.  The  quantity  exported  during  1911  amounted  to 
5,076,942  tons,  principally  to  France  (3,908,712  tons).  There 
are  also  valuable  zinc  mines. 

The  total  imports  during  1911  were  valued  at  £148,172,640, 
and  the  exports  were  valued  at  £112,388,920.  The  figures  for 
the  first  six  months  of  1911  are : — Imports  £78,072,320 ;  exports, 
£54,973,080. 

MONEY — The  monetary  unit  of  Belgium  is  the  franc=9  l/2d. 
=20  cents. 

WEIGHTS  AND  MEASURES — The  metric  system. 

Laws. 
Law  of  April  1,  1897.     Decree  of  July  7,  1897. 

Term. 
Perpetual. 

What  May  Be  Registered. 

All  signs  serving  to  distinguish  the  products  of  an  industry  or 
objects  of  commerce  are  considered  as  trade  marks. 

Who  May  Register. 

Foreigners  who  have  industrial  or  commercial  establishments 
in  Belgium  may  register  marks  for  use  on  the  products  of  such 
establishments.  It  is  the  same  with  foreigners  or  Belgians  who 
are  engaged  in  industry  or  commerce  abroad,  if  in  the  country 
where  their  establishments  are  located  reciprocity  for  Belgian 
marks  has  been  established  by  International  Convention.  (Art. 
6.)  The  first  user  of  the  mark  is  entitled  to  registration. 

Mode  of  Application. 

No  one  shall  lay  claim  to  any  right  to  use  of  a  mark  if  he  has 
not  filed  a  specimen  in  triplicate  and  an  electrotype  of  the  mark 
with  the  clerk  of  the  Tribunal  of  Commerce  in  the  district  in 
which  his  establishment  is  located.  (Art.  2.) 

The  applicant  must  furnish  a  statement  of  his  name,  address 
and  occupation,  and  that  of  his  attorney,  and  the  kind  of  in- 
dustry or  trade  in  which  the  mark  is  used.  The  mark  is  regis- 
tered without  preliminary  examination. 

The  fee  for  registration  is  10  francs.     (Art.  7.) 

Penal  Provisions. 

Will  be  punished  by  a  fine  of  from  26  to  2,000  francs  and  im- 
prisonment from  8  days  to  6  months,  or  one  of  these  penalties 
only: 


70  BELGIUM 

(a)  Those  who  have  counterfeited  a  mark  or  made  use  of  a 
counterfeited  mark ; 

(b)  Those  who  have  fraudulently  affixed  on  their  products  or 
objects  of  commerce  a  mark  belonging  to  another  party ; 

(c)  Those  who  have  knowingly  sold  or  put  up  for  sale  prod- 
ucts marked  with  a  counterfeit  mark  or  to  which  such  a  mark 
has  been  affixed.     (Art.  8.) 

A  punishment  by  a  fine  of  4,000  francs,  and  imprisonment  of 
one  year,  or  one  of  these  penalties,  is  inflicted,  in  case  of  a  re- 
newal of  the  offense,  as  stated  in  Article  8,  by  the  same  offender 
within  five  years  after  the  last  penalty  imposed  upon  him  for  a 
single  offense.  (Art.  10.) 

Assignments. 

A  trade  mark  cannot  be  transferred  except  with  the  transfer  of 
the  establishment  of  the  goods  which  it  serves  to  distinguish. 

The  assignment  fee  is  10  francs.     (Art.  7.) 

The  transfer  of  a  trade  mark  between  individuals  or  by  testa- 
ment must  be  registered  and  can  only  take  effect  as  regards  a 
third  person  after  the  deposit  of  an  extract  of  the  act  in  the 
form  prescribed  for  the  deposit  of  the  trade  mark. 

The  question  of  assignment  of  trade  marks  has  been  subject  to 
examination  in  the  Belgian  courts.  Article  7  of  the  Belgian  Law 
of  Aug.  1,  1897,  reads: 

"A  mark  can  be  assigned  only  in  connection  with  the  es- 
tablishment of  which  it  serves  to  distinguish  the  products. 
The  assignment  takes  effect,  so  far  as  concerns  third  parties, 
only  after  the  recording  of  a  copy  of  the  instrument  by  which 
it  is  made." 

The  recording  of  the  assignment  is  the  only  means  possible 
to  make  known  to  third  persons  the  fact  of  the  assignment,  for 
there  does  not  exist  in  Belgium  any  .registry  of  the  names  of 
business  firms.  The  Court  of  Brussels  had  before  it  the  ques- 
tion whether  the  recording  of  the  change  of  ownership  was  nec- 
essary in  case  of  succession  in  intestacy.  It  decided  in  the  affirm- 
ative, so  holding  on  the  strength  of  the  preliminary  draft  of  the 
law,  which  confined  its  terms  to  acts  inter  vivos  and  to  testament- 
ary dispositions,  the  article  being  changed  in  the  final  revision  to 
cover  any  form  of  transfer.  In  practice,  therefore,  it  will  al- 
ways be  necessary  to  have  recorded  an  extract  from  the  public 
records,  containing  proofs  necessary  to  establish  the  fact  of  suc- 
cession, and  the  rights  of  those  interested. 

The  Court  of  Cassation,  on  Jan.  12,  1905,  rendered  a  decision 
as  to  the  effect  of  recording  an  assignment,  in  so  far  as  con- 
cerns acts  of  infringement.  It  has  hitherto  been  the  belief  of 
several  authors  of  high  authority  that  acts  of  infringement,  com- 
mitted after  the  assignment  but  before  it  was  recorded,  could 


BELGIUM  71 

be  punished  in  a  civil  suit  brought  by  the  assignee  after  the 
assignment  had  been  recorded.  This  theory  of  the  retroactive 
effect  of  the  law  was  based  upon  the  idea  that  the  infringer 
was  in  any  case  at  fault,  and  that  he  could  not  complain  if  the 
rights  invaded  by  him  belonged  to  some  person  other  than  the 
one  whom  he  supposed  he  was  injuring.  The  decision  rejected 
this  theory,  relying  on  the  clear  language  of  the  law  and  said : 

"So  far  as  concerns  third  persons,  and  having  in  view  the 
preliminary  form  of  the  law,  the  question  is  as  to  the  in- 
tent of  the  Legislature.  It  was  evidently  to  cause  the  right 
of  the  assignee,  so  far  as  concerns  third  persons,  to  arise 
solely  at  the  time  of  registration,  and  to  deny  to  it,  in  ad- 
vance of  that  time,  any  legal  existence." 

Requirements. 

Power  of  Attorney  (See  Form  No.  3,  B.  Singer's  book  of 
Forms)  ;  six  facsimiles  of  the  mark;  and  one  electrotype. 

Laws  in  Force   to  Prevent  the  Sale  or  Importation  of  Goods1 
Bearing  a  False  Indication  of  Origin. 

No  special  laws  are  in  force  to  prevent  the  sale  or  importa- 
tion of  goods  bearing  false  indications  of  origin,  except  those 
which  merely  approve  the  Convention  of  Paris  of  March  20,  1883, 
as  modified  by  the  Arrangement  of  Madrid  of  1891  relating  to 
the  international  registration  of  trade  marks,  and  by  the  Addi- 
tional Act  of  Brussels  of  December,  1900.  The  Convention  of 
1883  prohibits  the  importation  of  goods  falsely  bearing  the  name 
of  any  locality  as  indication  of  origin,  but  only  provided  that  such 
indication  is  associated  with  a  trade  name  of  a  fictitious  char- 
acter or  assumed  with  fradulent  intention.  Full  protection  is 
given  by  law  to  trade  marks  and  to  the  trade  names  of  manufac- 
turers. The  Public  Prosecutor  possesses  the  sole  authority  to 
enforce  the  measures  of  the  Convention,  but  parties  interested 
may  request  him  to  take  steps  to  protect  their  rights. 

Although  there  is  no  special  law  on  the  matter,  bv  bringing  an 
action  under  the  Civil  Code  before  Commercial  Courts,  mer- 
chants can  restrain  the  sale  of  any  goods  bearing  a  false  indica- 
tion of  origin  if  they  are  marked  with  the  name  of  a  town  or 
district  which  is  well  known  as  a  place  where  goods  of  that 
description  are  manufactured  or  produced.  Only  the  merchants 
or  manufacturers  of  the  place  in  question  could  bring  such  an 
action.  A  criminal  prosecution  can  also  be  brought  by  a  pur- 
chaser of  goods  if  he  can  prove  that  he  has  been  deceived  as  to 
their  origin  and  that  the  deception  has  caused  him  damage.  For 
infringement  of  his  trade  mark  or  trade  name  a  manufacturer 
could  obtain  redress  in  either  a- Criminal  or  Commercial  Court. 
The  cost  of  a  criminal  case  is  practically  nil,  except  the  law- 


72  BELGIUM 

yer's  fee.  In  a  commercial  case  the  costs  for  service  of  writ 
are  about  15  francs,  and  no  further  expenses  have,  as  a  rule,  to 
be  paid  except  a  proportional  duty  on  damages  obtained  if  the 
case  is  successful,  lawyer's  fees,  and  the  costs  necessary  for  exe- 
cution of  judgment.  The  costs  are  small  compared  with  those  of 
U.  S.  or  English  litigation. 

Marking  Goods  :     "Marque  Deposee." 

Priority  of  Use. 

The  Belgian  law  provides  that  he  who  has  first  made  use  of  a 
mark  shall  alone  have  the  right  to  register  it  and  to  invoke  the 
protection  of  the  courts  in  that  country.  It  has  been  held  that 
prior  use  by  a  foreigner  in  his  own  counry,  provided  that  coun- 
try grant  to  Belgian  citizens  reciprocal  privileges,  is  sufficient  to 
confer  the  right  to  such  registration  and  protection  even  against 
a  subject  of  Belgium  who  in  ignorance  of  the  rights  of  his  for- 
eign rival  has  used  the  mark  in  his  own  country  before  registra- 
tion there. 

In  one  case  in  which  this  question  was  in  controversy,  the 
plaintiff  had  used  its  mark  in  France  since  1862,  registering  it  in 
Belgium  in  1891.  Defendant  had  used  the  mark  in  Belgium 
since  1883,  but  it  was  held  that  the  protection  accorded  by  the 
plaintiff's  registration  dated  back  to  the  time  of  its  first  use  of  the 
marks.  Therefore  it  mattered  not  that  another  had  used  the 
mark  in  Belgium  long  before  its  registration  there  by  the  plaintiff. 
(P.  Florent  et  Cie.  c.  Fayen,  La  Propriete  Industrielle,  1904,  p. 
168.) 

It  is  well  established  in  the  law  of  Belgium  that  it  is  priority  of 
use  and  not  priority  of  registration  that  gives  title  to  the  mark. 
While  it  is  necessary  to  register  in  order  to  enforce  the  right  to 
the  mark  as  against  an  infringer,  yet  the  only  valid  registra- 
tion is  that  of  the  first  user  of  the  mark.  Registration  creates  a 
presumption  of  title,  which,  however,  is  capable  of  being  rebutted 
by  evidence  of  prior  use  by  a  third  person.  (Marques  de  Fab- 
rique  et  da  Commerce,  Alexandre  Braun,  Brussels,  1880.) 

Furthermore,  it  would  appear  to  be  the  law  of  Belgium,  not 
only  that  priority  of  use  within  the  country  itself  will  give  title 
to  the  mark,  but  that  priority  of  use  even  outside  the  country, 
in  a  country  giving  reciprocal  protection  to  the  marks  of  Bel- 
gium's citizens,  will  be  similarly  recognized  as  the  basis  of  a  su- 
perior title. 

An  important  decision  of  the  Tribunal  of  Termode  deals  with 
the  result  of  expiration  of  a  trade  mark  registered  under  the 
Belgian  law,  and  defines  the  rights  of  the  owner  of  the  trade 
mark,  after  such  expiration. 

The  court  held,  in  effect,  that  the  registration  conferred  no 
title  to  the  mark,  title  being  dependent  only  upon  priority  of 
adoption  and  use.  Therefore,  the  failure  to  renew  the  registra- 


BELGIUM  73 

tion  within  the  time  prescribed,  while  it  would  suspend  the  right 
of  the  registrant  to  protect  the  mark  under  the  law,  did  not 
cause  him  to  lose  any  of  his  rights  in  the  mark  as  such.  A  sub- 
sequent registration  by  the  owner  would  have  all  the  force  and 
effect  of  the  original  registration  under  the  law.  (De  Buysscher 
vs.  Buys  &  Co.,  Revue  Pratique  du  Droit  Industrie!,  1912,  p.  24.) 

International  Convention. 

The  extent  of  the  protection  obtained  by  the  registration  of 
a  trade  mark  in  one  of  the  countries  adhering  to  the  international 
arrangement  of  1891  for  the  registration  of  trade  marks,  was  the 
subject  of  a  decision  by  the  criminal  court  of  Brussels  in  April, 
1910.  This  court  holds,  that  the  protection  in  each  of  the  states, 
parties  to  the  arrangement,  dates  from  the  time  of  the  registration 
of  the  mark  at  the  international  bureau  in  Berne  and  that  the 
further  step,  of  notification  by  the  international  bureau  to  the 
divers  states  of  the  Union,  is  not  necessary,  as  a  condition  of  ob- 
taining protection  in  those  several  states.  The  right,  therefore, 
to  prosecute  counterfeiters  in  any  of  the  states  does  not  depend 
upon  the  accomplishment  of  the  formality  of  official  notification 
to  that  and  the  other  states. 

The  same  case  holds  that  the  word  "Elegants,"  "Elegant,"  as 
applied  to  cigarettes,  is  not  descriptive,  since  it  conveys  no  idea 
of  the  article,  or  its  nature  or  qualities.  On  the  contrary,  it 
partakes  of  the  character  of  a  fantastic  designation  of  the  goods. 

In  the  court  of  appeals  of  Brussels,  it  has  been  held  that  where 
a  trade  mark  had  been  registered  in  one  of  the  states,  a  party  to 
the  international  convention,  but  there  has  been  a  failure  to  reg- 
ister in  the  other  states  within  the  four  months  period  allowed, 
within  which  a  right  of  priority  may  be  secured  by  the  owner  of 
a  trade  mark,  the  right  of  the  owner  in  any  of  the  other  countries 
of  the  Union  is  subject  to  the  rights  acquired  by  any  third  person 
in  the  meantime;  as,  for  example,  by  the  registration  or  use  of 
the  same  mark.  The  plaintiff  in  the  action  registered  its  trade 
mark  in  France  on  March  29,  1904,  but  neglected  to  secure  reg- 
istration in  Belgium  until  December  23,  1906.  The  defendant,  on 
the  other  hand,  began  to  make  use  of  the  mark  on  February  28, 
1906,  and  such  use  having  taken  place  in  Belgium  while  the  plain- 
tiff's mark  was  not  protected  in  Belgium,  there  was  no  ground 
for  action  against  the  defendant.  (Mareschal  &  Co.  vs.  Zun- 
sheim  &  Co.,  La  Prop.  Ind.,  1910,  p.  163.) 

DECISIONS. 
Unfair  Competition  by  Price  Cutting  in  Belgium. 

A  decision  of  the  Tribunal  of  Commerce  of  Brussels,  under 
date  of  March,  1905,  develops  a/emarkable  feature  of  the  law  of 
unfair  competition  in  that  country  and  is  strongly  suggestive  of 


74  BELGIUM 

the  French  law  in  such  cases.  A  merchant  placed  on  sale  with  a 
great  flourish  of  advertising  a  well  known  product  of  his  com- 
petitor at  a  very  .low  price,  at  the  same  time  puffing  a  similar 
article  of  his  own  make,  which  he  offered  for  sale  at  a  much 
higher  price.  The  decision  of  the  Court  condemned  the  defend- 
ant's practice  and  laid  down  the  following  principle  applicable  to 
such  cases : 

"Nobody  supposes  that  a  merchant  cannot  sell  or  dispose 
of  his  merchandise  at  a  price  less  than  its  cost  whenever  he 
shall  judge  it  to  be  for  his  interest  to  unload  a  particular 
stock  or  kind  or  quality  of  goods,  even  though  he  pursue 
the  policy  of  sacrificing  certain  articles  to  gain  an  advan- 
tage in  respect  to  others ;  for  every  one  is  free  to  dispose 
as  he  will  of  what  he  has  legitimately  acquired.  Never- 
theless, the  merchant  cannot  by  such  an  act  through  fraud 
or  malice  prejudice  another." 

Passing  upon  the  circumstances  of  the  case  before  it,  the 
Court  decided  that  the  defendant  had  with  premeditation  put 
on  sale  the  plaintiff's  merchandise,  not  with  the  expectation  of 
suffering  the  prejudice  which  would  come  from  its  sale  at  the 
price  fixed,  but  for  the  purpose  of  vaunting  his  own  product  and 
for  the  sake  of  the  advantage  which  he  would  gain  by  the  demand 
for  his  goods  unfairly  created  in  this  way,  in  the  expectation  that 
his  goods  and  not  the  goods  of  his  rival  would  be  sold.  Thereby 
he  sought  to  create  a  fictitious  reputation  for  his  goods  and  one 
unjustifiable  by  the  circumstances  of  the  market  and  to  cause 
prejudice  to  another  dealer.  (La  Propriete  Industrielle,  1905,  p. 
233.) 

Rights  of  Foreign  Citizens. 

The  court  of  appeals  of  Liege  .has  affirmed  the  judgment  of 
the  lower  court.  The  mark  alleged  to  have  been  infringed,  the 
property  of  a  British  subject,  consists  of  two  figures  "8,"  the 
lower  parts  being  larger  than  the  upper,  and  interlaced  one  with 
the  other.  The  upper  and  lower  loops  are  separated  by  an  arrow. 
The  mark  claimed  to  infringe  consists  merely  of  two  figures 
"8"  placed  side  by  side,  not  interlaced  but  tangent  one  with  the 
other. 

Notwithstanding  the  fact  that  the  plaintiff's  mark  had  been 
registered  in  Belgium,  the  court  of  appeals  holds  that  it  is  not 
entitled  to  protection,  inasmuch  as  the  mark  complained  of,  if  in 
conflict  with  the  complainant's,  is  shown  to  have  been  used  in 
Belgium  prior  to  the  registrant's  use  of  his  mark  there.  The 
presumption  of  priority  existing  under  the  law  in  favor  of  the 
registrant  is  accordingly  overcome,  the  registration  being  merely 
prima  facie  evidence  of  priority,  subject  to  rebuttal  by  proofs 
that  may  invalidate  the  registration  in  favor  of  some  prior  user. 

Moreover,  it  was  held  that  the  English  plaintiff  could  have  no 


BELGIUM  75 

greater  rights  in  Belgium  than  he  had  at  home.  The  law  of 
Great  Britain  prohibits  the  registration  as  a  trade  mark,  or  a 
mark  consisting  of  figures  only,  so  that  the  mere  numeral  88  is 
not  registrable  under  the  English  law  or  entitled  to  protection.  It 
is  evident,  therefore,  that  the  plaintiff's  mark  was  registered  in 
England  by  reason  of  the  distinctive  features  which  differentiate 
it  from  the  mere  numeral,  to-wit,  the  interlacing  lower  loops 
and  the  arrow.  It  would,  therefore,  be  contrary  to  all  the  re- 
quirements of  law  and  good  sense  to  hold  that  a  mark  in  the 
form  of  a  bare  numeral  could  be  confused  with  one  sufficiently 
different  in  design  from  the  numeral  to  be  registered  as  a  trade 
mark  when  the  numeral  itself  could  not  be  registered.  It  would 
be  equally  illogical  and  unreasonable  to  hold  that  the  owner  of 
the  trade  mark  registered  in  England  could  punish  as  an  in- 
fringement upon  his  mark  something  which  the  law  of  his  own 
country  would  not  recognize  as  a  trade  mark  at  all.  The  mark 
complained  of  being  one  open  to  common  use  in  England,  the 
plaintiff  is  entitled  to  no  greater  protection  against  its  use,  nor 
to  any  more  extensive  property  in  his  own  mark,  than  that 
granted  by  the  law  of  his  native  country.  (Johnstone  vs.  Grah 
&  Lovinfosse,  Revue  Pratique  du  Droit  Ind.,  1910,  p.  95.) 

The  Test  of  Infringement. 

With  respect  to  the  test  applied  by  the  courts,  to  determine 
when  the  infringement  of  a  trade  mark  exists,  the  Belgian  law 
is  not  different  from  our  own.  In  several  cases,  decided  within 
the  last  three  months,  it  has  been  held  to  be  the  law,  that  an  in- 
fringement should  be  considered  as  existing,  if  there  is  such  a 
similarity  between  the  original  mark  and  the  mark  claiming  to 
conflict  with  it,  as  would  mislead  a  person  giving  only  the  or- 
dinary and  usual  attention  thereto.  It  is  not  necessary  that  the 
imitation  be  close,  nor  that  there  exist  between  the  two  marks  an 
absolute  resemblance.  It  is  enough  that  their  external  appear- 
ance and  the  general  impression  which  they  make  may  mislead 
and  cause  confusion  between  the  products  which  they  are  respec- 
tively intended  to  distinguish. 

Differences  of  detail,  which  would  appear  when  the  two  marks 
were  placed  side  by  side,  are  not  sufficient  to  avoid  the  charge 
of  infringement,  where  the  similarity  is  such  as  will  confuse  a 
purchaser,  who  does  not  have  the  two  marks  before  his  eyes 
for  purposes  of  comparison.  (Societe  Derbaix  vs.  Societe  Such- 
ard,  Revue  Pratique  du  Droit  Ind.,  1910,  p.  57.) 

The  Wrapper  as  a  Trade  Mark. 

In  the  decision  last  cited,  the  commercial  court  of  Gand  held 
that  under  the  Belgian  law  any/marking  which  served  to  dis- 
tinguish the  products  of  an  industry  might  be  considered  a  trade 


76  BELGIUM 

mark.  To  reach  this  determination,  resort  was  held  to  the  studies 
preliminary  to  the  law  and  to  the  official  circular,  subsequently 
interpreting  the  same.  From  these,  it  was  evident  that  the  wrap- 
per of  an  article,  or  the  manner  of  packing  it,  could  be  taken 
as  a  trade  mark  if  distinctive,  characteristic,  special  and  new  in 
the  industry  in  which  they  are  employed. 

Liability  of  an  Inf ringer. 

The  court  of  appeals  of  Liege  has  held,  that  the  withdrawal 
of  the  infringing  mark  after  the  institution  of  the  suit  does  not 
suffice  to  absolve  the  owner  of  the  mark  from  liability  for  the 
damage  suffered  before  the  action  was  brought.  (Carabaux  vs. 
Hardy,  Revue  Pratique  du  Droit  Ind.,  1910,  p.  63.) 

Rights  of  Foreign  Citizens. 

The  court  of  appeals  of  Brussels,  Belgium,  has  decided  a  case 
that  is  of  the  utmost  importance,  as  affecting  the  rights  of  citi- 
zens of  foreign  countries  under  the  Belgian  trade  mark  law. 

The  provisions  of  that  law  with  which  the  decision  was  con- 
cerned are,  that  persons  carrying  on  business  in  Belgium, 
whether  natives  or  foreigners,  enjoy  the  benefit  of  the  law,  upon 
fulfilling  the  requirements  relative  to  registration,  while  persons 
carrying  on  business  outside  of  Belgium,  whether  Belgians  or 
foreigners,  have  no  benefit  of  the  law  unless,  by  treaty  arrange- 
ments with  the  country  where  they  are  located,  the  reciprocal 
protection  of  the  marks  of  Belgian  citizens  has  been  secured. 
Thus,  it  will  be  seen  that  the  right  of  a  Belgian  citizen  to  pro- 
tection under  this  law  depends,  not  upon  his  citizenship,  but  upon 
his  residence  in  Belgium,  or  in  a  country  where  treaty  arrange- 
ments secure  protection  to  Belgian  marks. 

A  French  company  which  has  no  establishment  in  Belgium  but 
which  had  there  registered  its  trade  mark,  brought  a  suit  to  pun- 
ish infringement  thereof  in  Belgium.  It  was  held,  however,  by 
the  court,  that,  there  being  no  existing  treaty  with  France  secur- 
ing to  Belgian  trade  marks  the  reciprocal  protection  contemplated 
by  the  Belgian  law,  the  action  by  the  French  firm  could  not  be 
sustained.  The  fact  that  at  the  time  the  registration  was  made  in 
Belgium  such  a  treaty  was  in  force  between  the  countries,  did 
not  help  the  plaintiff,  inasmuch  as  the  treaty  had  expired  by 
limitation,  before  the  acts  complained  of  and  before  the  bringing 
of  the  suit. 

Although  France  and  Belgium  were  both  parties  to  the  Inter- 
national Convention  of  1883,  it  was  held  that  there  was  nothing 
in  that  convention  to  secure  to  a  French  citizen  a  greater  measure 
of  protection  to  his  trade  marks  than  that  recognized  in  the  deci- 


BELGIUM  77 

sion,  for  the  reason,  that  the  convention  secures  to  French  citi- 
zens only  the  rights  which  the  Belgian  trade  mark  law  accords 
to  its  own  citizens;  and,  since  its  own  citizens  are  unprotected 
unless  they  carry  on  business  in  Belgium,  the  citizens  of  foreign 
countries,  doing  business  in  Belgium,  must  remain  without  pro- 
tection, under  the  like  circumstances. 

The  result  of  this  decision  is  to  hold  that  a  citizen  of  any 
country,  whose  rights  are  not  secured  as  above  mentioned  by 
treaty,  is  without  protection  for  his  trade  marks  in  Belgium,  not- 
withstanding their  registration  there.  The  registration  is,  in 
fact,  without  any  value  whatever,  as  to  such  marks.  (Hebebrand 
vs.  Societe  Franchise  Coton,  November  18,  1910,  Propriete  In- 
dustrielle.) 

This  condition  would  be  one  well  calculated  to  cause  appre- 
hension in  the  minds  of  American  owners  of  trade  marks  who 
have  registered  there,  were  it  not  that  by  treaty  between  the 
United  States  and  Belgium,  signed  on  March  8,  1875,  the  recip- 
rocal rights  of  Belgian  and  American  citizens  in  the  several 
countries  are  defined.  The  treaty  recites,  that  the  parties  are 
desirous  of  obtaining  a  complete  and  effective  protection  to  the 
industry  of  their  respective  citizens  and  they,  therefore,  agree 
that  every  infringement,  in  either  country,  upon  the  trade  marks 
applied  to  merchandise  manufactured  in  the  other  country,  shall 
be  a  ground  for  action  before  the  courts  of  the  respective  coun- 
tries; provided,  however,  that  the  mark  so  infringed  upon,  has 
been  duly  registered  in  accordance  with  the  Belgian  and  United 
States  laws.  This  treaty,  supplemented  by  a  later  treaty  of  July 
7,  1884,  appears  to  secure  the  right  to  American  citizens,  who 
have  registered  their  trade  marks  in  Belgium,  of  resorting  to 
the  Belgian  courts  for  protection  against  inf ringers. 


It  has  been  held  by  a  Belgian  court  that  the  sale  of  cigars 
which  bore  a  mark  similar  to  one  regularly  registered,  could  not 
be  justified  upon  the  ground  that  the  seller  acted  in  good  faith, 
when,  knowing  from  his  acquaintance  with  the  cigar  trade  that 
such  cigars  were  commonly  sold  by  the  owner  of  the  trade  mark 
in  boxes,  although  he  had  bought  them  loose,  he  had  neither 
made  inquiry  for  an  explanation  of  the  circumstance  from  the 
owner  of  the  trade  mark,  nor  from  the  seller  of  the  cigars.  These 
facts  were  held  to  show  that,  in  the  purchase  of  the  cigars,  he 
must  have  known  that  the  marks  which  they  bore  were  counter- 
feit or  fraudulently  applied. 

In  the  calculation  of  the  damages,  the  court  said,  account 
should  be  taken  of  the  loss  of  profits  which  the  owner  of  the 
mark  had  suffered  in  the  sale  of  his  wares  and  the  depreciation 
in  the  value  of  his  trade  through  the  sale  of  wares  at  a  much  in- 
ferior price  under  the  counterfeit  marks. 


78  BERMUDA 

The  court  further  held  that  goods  bearing  the  infringing  marks 
in  the  hands  of  third  persons,  and  their  property,  could  not  be 
confiscated  in  the  proceeding.  (Henry  Clay  &  Bock  Co.  vs.  Van 
Houten,  Journal  des  Tribunaux,  1908,  p.  280.) 

Upon  the  question  of  abandonment  of  a  trade  mark,  it  is  held 
that  this  is  not  to  be  presumed,  except  from  unequivocal  acts. 
The  mere  usurpation  of  the  trade  mark  by  others  is  not  to  be  con- 
sidered evidence  of  such  abandonment  by  the  real  owner,  even 
though  the  others  have  registered  the  mark  as  their  trade  mark, 
unless  it  be  proven  that  these  facts  have  been  known  to  the  owner 
of  the  mark. 

In  cases  of  infringement  of  trade  marks,  the  fact  that  the 
in  f ringer  has  taken  great  pains  to  bring  about  a  similarity  be- 
tween his  products  and  those  of  his  competitor,  by  employing  the 
same  color  of  paper  for  the  wrapper  of  his  packages,  giving  to 
them  the  same  dimensions,  arranging  the  characters  above  them 
in  the  same  manner,  and  making  the  package  of  a  similar  form, 
shows  the  fraudulent  intention  that  he  has,  to  infringe  upon  the 
mark  in  question.  (L'Etat  Francais  vs.  X.,  Revue  Pratique  du 
Droit  Industrie!,  1910,  p.  161.) 

The  criminal  court  of  Audenaerde  holds,  that  one  who  under- 
takes to  manufacture  for  another  merchandise  under  a  trade 
mark  specified  by  the  latter,  recognizes  the  prior  right  of  his 
employer  to  the  trade  mark  and  is  estopped  thereafter  to  deny  it, 
when  subsequently  prosecuted  for  infringement  upon  the  mark. 
In  this  instance,  one  who  had  adopted  the  word  "Phonograph" 
for  sewing  cotton  shortly  thereafter  engaged  the  plaintiff  in  the 
suit  to  manufacture 'the  goods  under  this  mark  for  him.  The 
latter  thereafter  registered  the  trade  mark  as  his  own  in  Belgium 
and  continued  the  use  thereof.  Thereafter  he  brought  suit  against 
another  party  for  infringement  of  the  trade  mark  and  the  man- 
ner in  which  the  plaintiff  first  came  to  use  the  mark  having  been 
shown  in  defense,  it  was  held  that  he  had  no  rights  which  the 
court  would  protect. 

It  was  furthermore  made  clear  by  the  court  that  the  law  would 
not  protect  him  who  registered  or  used  a  trade  mark  that  he  had 
not  created  and  which  had  already  been  used  bv  others,  whether 
within  or  without  Belgium.  The  mark  in  question  had  been  long 
established  in  the  English  market  by  the  originators  thereof. 
(Societe  A  vs.  V.  S.,  Revue  Pratique  du  Droit  Industrie!,  1910, 
p.  166.) 


BERMUDA 

This  colony  consists  of  a  cluster  of  about  360  small  islands, 
18  or  20  of  which  are  inhabited ;  the  rest  are  of  inconsiderable 
size.  The  largest,  or  Bermuda  proper,  contains  only  20  square 


BERMUDA  79 

miles  of  land,  and  nowhere  exceeds  three  miles  in  breadth.  The 
population  of  the  islands  (1907)  is  estimated  at  19,299.  The 
islands  are  of  great  importance  as  a  Naval  Station.  At  Ireland 
Island,  one  of  the  group,  are  His  Majesty's  Dockyard  and  some 
other  considerable  naval  establishments. 

The  only  trade  consists  in  the  export  of  early  agricultural  pro- 
duce to  the  United  States.  It  is  famous  for  its  arrowroot,  said  to 
be  the  finest  in  the  world,  and  this,  with  onions,  potatoes,  toma- 
toes and  lily  bulbs,  constitute  the  exports. 

The  enormous  disproportion  between  the  value  of  the  exports 
and  that  of  the  imports  is  owing  to  the  circumstance  that  nearly 
every  article  required  for  the  food  or  for  the  clothing  of  the 
entire  civil  population,  garrison  and  fleet  is  imported  from  abroad, 
principally  from  the  United  States. 

MONEY,  WEIGHTS  AND  MEASURES — Same  as  Great  Britain. 

Law. 
Act  No.  51  of  the  18th  of  November,  1902. 

Duration — Renewals. 

Trade  Marks  are  registered  for  a  term  of  fourteen  years, 
counting  from  the  date  of  registration.  A  mark  may  be  re- 
newed upon  the  register  indefinitely  for  successive  periods  of 
fourteen  years  each,  upon  due  application  and  payment  of  the 
prescribed  fee. 

A  mark  removed  from  the  register  for  non-payment  of  the 
prescribed  fee  may  be  restored,  if  the  Registrar  is  satisfied  that  it 
is  just  to  do  so. 

A  trade  mark  removed  from  the  register,  for  any  cause,  will 
for  the  purpose  of  any  application,  during  one  year  next  after 
the  date  of  such  removal,  be  deemed  a  registered  trade  mark 
unless  it  is  shown  to  the  satisfaction  of  the  Registrar  that  the 
cause  arose  from  the  death,  bankruptcy  or  cessation  of  business 
of  the  registered  proprietor,  and  that  no  one  claiming  under 
him  or  his  bankruptcy  is  using  such  trade  mark. 

What  May  be  Registered. 

A  trade  mark  must  consist  of,  or  contain  at  least  one  of  the 
following  essential  particulars : 

A  name  of  an  individual  or  firm  printed,  impressed,  or  woven 
in  some  particular  or  distinctive  manner ;  or 

A  written  signature  or  copy  of  a  written  signature  of  the  in- 
dividual or  firm  applying  for  registration  thereof  as  a  trade 
mark ;  or 

A  distinctive  device,  mark,  brand,  heading,  label  or  ticket;  or 

An  invented  word  or  invented  words  ;  or 


8o  BERMUDA 

A  word  or  words  having  no  reference  to  the  character  or  qual- 
ity of  the  goods,  and  not  being  a  geographical  name. 

There  may  be  added  to  any  one  or  more  of  the  essential  par- 
ticulars mentioned  in  this  section  any  letters,  words  or  figures,  or 
combination  of  letters,  words  or  figures,  or  any  of  them,  but  the 
applicant  for  registration  of  any  such  additional  matter  must 
state  in  his  application  the  essential  particulars  of  the  trade  mark, 
and  must  disclaim  in  his  application  any  right  to  the  exclusive 
use  of  the  added  matter,  and  a  copy  of  the  statement  and  dis- 
claimer must  be  entered  on  the  register. 

Provided  always  as  follows : 

A  person  need  not  under  this  section  disclaim  his  own  name 
or  the  foreign  equivalent  thereof,  or  his  place  of  business,  but  no 
entry  of  any  such  name  shall  affect  the  right  of  any  owner  of  the 
same  name  to  use  that  name  or  the  foreign  equivalent  thereof; 
and 

Any  special  and  distinctive  word  or  words,  letter,  figure,  or 
combination  of  letters  or  figures,  or  of  letters  and  figures  used 
as  a  trade  mark  either  in  this  Colony  or  elsewhere  before  this 
Act  came  into  operation,  may  be  registered  as  a  trade  mark. 
(Art.  29.) 

Any  distinctive  word  or  combination  of  words,  or  in  case  of 
a  trade  mark  used  in  the  Colony  or  elsewhere  before  the  Act  came 
into  operation,  any  distinctive  device,  mark,  brand,  heading,  label, 
ticket,  letter  or  figure,  or  combination  of  letters,  words,  or  fig- 
ures, may  be  entered  as  an  addition  to  any  trade  mark,  although 
the  same  is  common  to  the  trade  in  the  goods  with  respect  to 
which  the  application  'is  made. 

Any  device,  mark,  brand,  label,  ticket,  letter,  word,  figure,  or 
combination  of  letters,  words,  or  figures  which  was  or  were 
used  publicly  by  more  than  three  persons  in  the  Colony  or  else- 
where before  the  Act  came  into  operation,  on  the  same  or  a  simi- 
lar description  of  goods  is  deemed  common  to  the  trade  in  such 
goods. 

The  registration  of  a  person  as  a  proprietor  of  a  trade  mark 
shall  be  prima  facie  evidence  of  his  right  to  the  exclusive  use  of 
the  trade  mark,  and  shall  after  the  expiration  of  five  years  from 
the  date  of  registration  be  conclusive  evidence  of  his  right  to 
the  exclusive  use  of  the  trade  mark,  subject  to  the  provisions  of 
the  Act. 

A  trade  mark  must  be  registered  for  particular  goods  or 
classes  of  goods.  A  trade  mark  may  be  registered  in  any  color, 
and  such  registration  will,  subject  to  the  provisions  of  the  Act, 
confer  on  the  registered  owner  the  exclusive  right  to  the  use  of 
the  same  in  that  or  any  other  color.  Every  application  for  regis- 
tration of  a  trade  under  this  Act  is  required  as  soon  as  practic- 
able after  its  receipt  to  be  advertised  by  the  Registrar  in  the  Ga- 
zette, unless  he  shall  refuse  to  entertain  the  application. 


BERMUDA  81 

Registration  of  a  Series  of  Marks. 

When  a  person  claiming  to  be  the  proprietor  of  several  trade 
marks,  which,  while  resembling  each  other  in  the  material  par- 
ticulars thereof,  yet  differ  in  respect  of 

(a)  The  statement  of  the  goods  for  which  they  are  respec- 
tively used  or  purpose  to  be  used,  or 
(&)  statement  of  numbers,  or 

(c)  statement  of  price,  or 

(d)  statements  of  quality,  or 

(e)  statements  of  names  of  places,  seeks  to  register  such 
trade  marks,  they  may  be  registered  as  a  series  in  one  registra- 
tion.   A  series  of  trade  marks  shall  be  assignable  and  transmiss- 
able  only  as  a  whole ;  but  for  all  other  purposes  each  of  the  trade 
marks  composing  a  series  shall  be  deemed  and  treated  as  regis- 
tered separately.     (Art.  31.) 

What  May  Not  be  Registered. 

It  is  not  lawful  to  register  as  part  of,  or  in  combination  with 
a  trade  mark  any  words  the  use  of  which  would,  by  reason  of 
their  being  calculated  to  deceive,  or  otherwise,  be  deemed  disen- 
titled to  protection  in  England  according  to  the  law  and  practice 
there  in  such  matters.  The  Registrar  may  refuse  to  register  a 
trade  mark  the  use  of  which  would  be  scandalous  or  contrary  to 
law  or  morality. 

Except  where  the  court  has  decided  that  two  or  more  persons 
are  entitled  to  be  registered  as  proprietors  of  the  same  trade 
mark,  the  Registrar  may  not  register  in  respect  of  the  same 
goods  or  description  of  goods  a  trade  mark  identical  with  one 
already  on  the  Register  with  respect  to  such  goods  or  description 
of  goods,  or  having  such  resemblance  to  a  trade  mark  already  on 
the  Register  with  respect  to  such  goods  or  description  of  goods 
as  to  be  calculated  to  deceive.  (Art.  37.) 

Assignments. 

A  trade  mark,  when  registered,  may  be  assigned  and  trans- 
mitted only  in  connection  with  the  good  will  of  the  business 
concerned  in  the  particular  goods  or  classes  of  goods  for  which 
it  has  been  registered,  and  will  be  determinable  with  that  good 
will.  Where  a  person  becomes  entitled  by  assignment,  transmis- 
sion or  other  operation  of  law  to  a  registered  trade  mark  the 
Registrar  will,  upon  request  and  on  proof  of  title,  cause  the  name 
of  such  person  to  be  entered  as  the  proprietor  of  the  trade  mark 
in  the  Register  of  Trade  Marks.  The  person  so  registered  as  a 
proprietor  of  the  trade  mark  will,  subject  to  the  provisions  of  the 
Act  and  any  rights  appearing  from  such  Register  to  be  vested  in 
any  other  person,  have  power  absofutely  to  assign,  grant  licenses 


82  BERMUDA 

as  to,  or  otherwise  deal  with,  the  same,  and  to  give  effectual  re- 
ceipts for  any  consideration  for  such  assignment,  license  or  deal- 
ing ;  provided  that  any  equities  in  respect  of  such  trade  mark 
may  be  enforced  in  like  manner  as  in  respect  of  any  other  per- 
sonal property ;  provided  also  that  the  priority  of  all  assignments 
and  charges  shall,  as  regards  purchasers  for  value  without  notice, 
be  determined  by  priority  of  registration.  No  notice  of  any 
trust,  express,  implied  or  constructive,  may  be  entered  upon  the 
Register.  A  series  of  marks  are  assignable  only  as  a  whole. 
(Art.  43.) 

Application  and  Procedure. 

The  Registrar  may,  on  application  by  or  on  behalf  of  any 
person  claiming  to  be  the  proprietor  of  a  trade  mark  and  on 
payment  of  the  prescribed  fee,  register  the  trade  mark. 

The  application  must  be  accompanied  by  the  prescribed  num- 
ber of  representations  of  the  trade  mark  and  must  state  the 
particular  class  of  goods  or  classes  of  goods  in  connection  with 
which  the  applicant  desires  the  trade  mark  to  be  registered. 

The  Registrar  may,  if  he  thinks  fit,  refuse  to  register  a  trade 
mark,  subject  to  appeal  to  a  Judge  in  Chambers. 

The  application  for  the  registration  of  a  trade  mark  will  be 
deemed  to  be  equivalent  to  the  public  use  of  the  trade  mark  and 
the  date  of  the  application  will  for  the  purposes  of  the  Act  be 
deemed  to  be  the  date  of  registration. 

Where  the  registration  of  a  trade  mark  is  not  completed  within 
twelve  months  from  the  date  of  the  application  by  reason  of  de- 
fault on  the  part  of  the  applicant,  the  application  will  be  deemed 
to  be  abandoned. 

0  f>  positions. 

Any  person  may  within  three  months  after  the  first  advertise- 
ment of  an  application  for  registration  give  notice  in  duplicate  to 
the  Registrar  of  opposition  to  registration  of  the  trade  mark,  and 
the  Registrar  will  give  notice  of  such  opposition  to  the  appli- 
cant. 

Within  one  month  after  the  receipt  of  such  notice,  or  such 
further  time  as  the  Registrar  shall  allow,  the  applicant  may  send 
to  the  Registrar  a  counter-statement  in  duplicate  of  the  grounds 
on  which  he  relies  for  his  application,  and  if  he  does  not  do  so 
shall  be  deemed  to  have  abandoned  his  application.  On  receipt 
of  such  counter-statement,  or  where  each  of  two  or  more  persons 
claim  to  be  registered  as  the  proprietor  of  the  same  trade  mark, 
the  Registrar  may  refuse  to  register  any  of  them  until  their 
rights  have  been  determined  by  the  Court.  (Art.  34.) 

Infringement. 

The  Court  may  restrain  any  person  from  infringing  a  trade 
mark  and  damages  for  such  infringement  may  be  recovered  by 


-BOLIVIA  83 

action  in  the  Court  of  General  Assize  if  such  trade  mark  has 
been  registered,  or  if  registration  thereof  in  the  Register  of 
Trade  Marks  has  been  refused,  but  in  no  other  case.  The  Reg- 
istrar on  request,  and  on  payment  of  the  prescribed  fee,  may 
grant  a  certificate  that  such  registration  has  been  refused.  (Art. 
41.) 

In  an  action  for  infringement  of  a  registered  trade  mark 
the  Court  or  the  Judge  may  certify  that  the  right  to  the  exclusive 
use  of  the  trade  mark  came  into  question,  and,  if  the  Covirt  or 
the  Judge,  so  certifies,  then  in  any  subsequent  action  for  infringe- 
ment the  plaintiff  in  that  action,  on  obtaining  a  final  order  or 
judgment  in  his  favor,  shall  have  his  full  costs,  charges  and  ex- 
penses as  between  Solicitor  and  client,  unless  the  Court  or  the 
Judge  trying  the  subsequent  action  certifies  that  he  ought  not  to 
have  the  same.  (Art.  42.) 

Alterations  or  Amendments. 

The  registered  proprietor  of  any  trade  mark  may  apply  to 
the  Court  for  leave  to  add  to  or  alter  such  mark  in  any  particu- 
lar, not  being  an  essential  particular  within  the  meaning  of  the 
Act,  and  the  Court  may  refuse  or  grant  leave  on  such  terms  as 
it  may  think  fit. 

Notice  of  any  intended  application  to  the  Court  under  this 
section  must  be  given  to  the  Registrar  by  the  applicant,  and  the 
Registrar  is  entitled  to  be  heard  personally,  or  by  solicitor  or 
counsel,  on  the  application,  and  the  Court  may  make  such  order 
as  to  the  Registrar's  cost  as  it  may  think  fit. 

If  the  Court  grants  leave  the  Registrar  will  on  proof  thereof, 
and  on  payment  of  the  prescribed  fee,  cause  the  register  to  be  al- 
tered in  conformity  with  the  order  of  leave.  (Art.  44.) 

Documents  Required. 

1.  Application,  signed  by  the  applicant.     No  legalization  re- 
quired. 

2.  Three  representations  of  the  mark,  one  to  be  fixed  within 
the  blank  space  left  in  the  application  and  the  two  others  on 
separate  sheets  of  foolscap  of  same  size. 

3.  Power  of  attorney,  signed  by  the  applicant.     No  legaliza- 
tion required. 

(Form  for  application  may  be  obtained  from  B.  Singer's  of- 
fices.) 


BOLIVIA 

The  area  of  this  Republic  is  about  911,146  square  miles.  The 
population  in  1911  was  estimated  at  about  2,380,520,  including 
uncivilized  Indians. 


84  BOLIVIA 

The  natural  wealth  of  Bolivia  is  very  great;  the  alpaca  llama 
and  the  vicuna  abound,  and  also  the  chinchilla,  the  nutria  and 
other  fur  bearing  animals ;  valuable  cabinet  and  building  woods 
and  also  dye  woods  are  plentiful ;  cotton,  coca,  cocoa,  and  caout- 
chouc are  also  produced ;  the  latter  is  now  exported  in  large 
quantities  from  the  eastern  territories. 

Gold,  silver,  copper,  tin,  lead,  iron  and  bismuth  are  also  abund- 
ant; in  fact  the  great  business  of  the  country  is  silver  and  tin 
mining;  the  second  largest  silver  mine  in  the  world  is  that  of 
Huanchaca. 

MONEY,  WEIGHTS  AND  MEASURES — The  monetary  unit  of  Bo- 
livia is  the  Boliviano=to  100  Centavos=40  cents  U.  S. 

For  weights  and  measures,  Bolivia  has  adopted  the  metric  sys- 
tem. 

Laws. 

Law  of  November  5,  1893;  decree  of  March  27,  1897  and 
May  20,  1902. 

Duration. 

Indefinite.  A  tax  of  5  Bolivianos  per  year,  to  be  collected 
through  the  Department  of  the  Treasury  and  Industry,  shall  be 
hereafter  levied  on  every  trade  mark  which  may  be  filed  for  reg- 
istration at  the  proper  office.  (Art.  1.) 

What  May  be  Registered. 

The  following  shall  be  considered  as  trade  marks,  namely :  En- 
gravings, monograms,  vignettes,  stamps  in  relief,  letters  and 
numerals  with  a  special  design,  casks  or  wrapping  of  articles, 
and  any  other  signs  intended  to  distinguish  from  all  others  the 
products  of  a  factory.  (Art.  3.) 

The  registration  of  marks  is  compulsory  and  no  article  bear- 
ing a  mark  can  be  sold  or  exposed  for  sale  in  Bolivia  unless  the 
mark  has  been  previously  registered,  under  penalty  of  a  fine  of  5 
to  50  Bolivianos  and  the  registration  which  was  not  effected. 

Merchandise  of  a  particular  trade  mark,  ordered  from  abroad 
prior  to  the  date  of  the  filing  of  the  application  with  the  Prefect 
for  registration  of  the  same  trade  mark,  shall  not  be  considered 
articles  of  commerce  bearing  a  counterfeited  trade  mark.  (Art. 

3.) 

Mode  of  Application. 

All  applications  shall  be  accompanied  by  two  copies  or  samples 
of  the  engraving,  emblem,  letter,  stamp  in  relief,  etc.,  which  is 
to  be  used.  One  copy  shall  be  filed  at  the  registration  office  and 
the  other  forwarded  to  the  Department  of  "Fomento."  (Art.  6.) 

The  application  shall  also  be  accompanied  by  a  description  of 
the  mark,  made  in  duplicate,  said  description  to  specify  the  ar- 
ticle or  articles  for  which  it  is.  intended.  If  the  owner  of  the 


BOLIVIA  85 

mark  does  not  personally  attend  to  the  business  of  this  applica- 
tion, the  power  of  attorney  authorizing  the  applicant  to  act  in 
his  behalf  shall  also  accompany  the  application.  (Art.  7.) 

No  application  shall  be  admitted  if  it  is  not  accompanied  with 
a  receipt  issued  by  the  Department  of  the  Treasury  showing  that 
the  tax  established  by  Article  1  of  this  decree  has  been  paid. 
Failure  to  comply  with  any  of  the  provisions  of  this  article  shall 
cause  the  respective  functionary  to  be  responsible  for  the  value 
of  the  patent.  (Art.  8.) 

The  Prefects,  after  having  complied  with  all  the  requisites  es- 
tablished in  the  foregoing  articles,  shall  grant  in  the  name  of  the 
nation  the  exclusive  right  to  use  the  trade  mark.  The  decree 
by  which  this  grant  is  made,  as  well  as  the  application  itself  with 
all  its  exhibits,  shall  be  published  in  the  Official  Bulletin,  and  if 
there  is  no  such  Bulletin,  in  any  newspaper  to  be  designated  for 
that  purpose,  the  publication  to  be  made  three  separate  times, 
ten  days  intervening  between  each,  at  the  cost  of  the  interested 
party.  (Art.  10.) 

After  the  publication  is  made  as  directed  in  the  foregoing  ar- 
ticle, the  applicant  shall  request,  if  no  opposition  has  been  shown 
to  the  granting  of  the  trade  mark,  that  the  whole  record  should 
be  forwarded  to  the  Secretary  of  "Fomento,"  in  order  that  he, 
upon  the  proper  report  of  the  law  officer  of  the  Department,  may 
approve  the  concession.  (Art.  11.) 

If  any  opposition  is  made  after  the  expiration  of  the  time  of 
publication,  the  Prefect  shall  refer  the  whole  record  to  the  Dis- 
trict Attorney,  who  shall  decide  about  the  priority  of  rights  ac- 
cording to  law.  (Art.  12.) 

If  the  decision  of  the  Prefect  is  against  the  granting  of  the 
trade  mark,  an  appeal  may  be  taken  against  it  within  eight  days, 
to  be  counted  from  the  date  of  notification,  to  the  Secretary  of 
"Fomento,"  who,  after  hearing  the  opinion  of  the  Attorney-Gen- 
eral, shall  affirm  or  reverse  the  decision.  The  decision  of  the 
Secretary  of  "Fomento"  shall  be  final.  (Art.  13.) 

The  sampjes  of  marks,  or  emblems,  and  their  descriptions  shall 
be  faithfully  kept,  duly  inventoried,  and  methodically  classified, 
by  the  Notary  of  the  Treasury.  They  shall  be  exhibited  for  pub- 
lic inspection  in  well  arranged  cases.  (Art.  14.) 

Fines. 

Counterfeiters  of  trade  marks,  adulterators  of  articles  of  com- 
merce of  a  business  house  which  makes  use  of  a  trade  mark  and 
sellers  of  counterfeited  articles  shall  be  punished  with  a  fine  of 
from  20  to  200  Bolivianos,  independently  of  the  penalties  men- 
tioned in  Article  302  of  the  Penal  Code.  (Art.  15.) 

Articles  of  merchandise  bearing  counterfeited  trade  marks  shall 
be  confiscated  to  the  benefit  of  th/  Departmental  Councils.  (Art. 
16.) 


86  BOLIVIA 

Business  men  who  prior  to  the  enactment  of  this  decree  have 
been  making  use  of  a  trade  mark  which  proves  to  be  identical 
with  another  trade  mark  granted  under  the  new  provisions  shall 
be  bound  to  adopt  some  change  or  modification  of  their  distinc- 
tive sign  or  emblem.  Their  failure  to  do  so  shall  render  them 
liable  to  be  punished  as  counterfeiters.  (Art.  17.) 

Business  men  who  make  use  without  the  proper  authority  of 
a  trade  mark  shall  be  punished  with  a  fine  of  from  5  to  50  Bo- 
livianos, for  the  municipal  fund,  without  prejudice  to  their  being 
compelled  to  secure  in  the  proper  way  the  authority  required  by 
this  decree.  (Art.  18.) 

Joint  stock  companies  are  entitled  to  the  use  of  their  names 
without  any  restriction.  (Art.  19.) 

Foreign  trade  marks  shall  not  enjoy  the  guarantees  granted  by 
the  present  decree  unless  they  are  registered  with  the  same  for- 
malities as  are  established  for  the  domestic  ones.  (Art.  20.) 

Business  men  who  fail  to  pay  the  taxes  due  on  account  of  their 
trade  marks  shall  be  be  subject  to  the  process  of  coercion  estab- 
lished by  law  against  delinquents  of  this  kind.  If  the  payment 
is  not  made  after  the  first  notice,  a  sufficient  number  of  the  ar- 
ticles of  commerce  protected  by  the  mark  shall  be  seized  and 
sold  at  public  auction.  The  amount  of  the  tax  and  a  penalty 
of  2  per  cent  per  month  shall  be  collected  by  this  process.  The 
concession  of  the  trade  mark  may  be  also  cancelled.  (Art.  21.) 

Business  men  who  after  having  been  punished  as  provided  iVi 
the  foregoing  article  should  continue  to  make  use  of  the  trade 
mark,  shall  be  prosecuted  as  counterfeiters.  (Art.  22.) 

Assignment. 

The  sale  of  the  business  house,  or  industrial  enterprise  to 
which  the  mark  belongs,  shall  carry  with  it,  unless  provided 
otherwise  by  the  contracting  parties,  the  transfer  of  the  mark. 
(Art.  4.) 

The  transfer  of  the  mark  shall  be,  for  the  purposes  of  this  de- 
cree, recorded  at  the  proper  office.  (Art.  5.) 

Requirements. 

Power  of  attorney,  legalized  by  the  Bolivian  Consul;  (See 
Form  No.  1,  B.  Singer's  book  of  forms)  ;  two  facsimiles  of  the 
mark.  The  dimensions  and  colors  used  in  every  mark  that  con- 
sists of  labels  or  typical  designs  must  be  given. 

Trade  Mark  Registration  Compulsory. 

Business  men  who  make  use  without  the  proper  authority  of 
a  trade  mark  shall  be  punished  with  a  fine  of  from  5  to  50  Bo- 
livianos, for  the  municipal  fund,  without  prejudice  to  their  be- 


BRAZIL  87 

ing  compelled  to  secure  in  the  proper  way  the  authority  re- 
quired by  this  decree.  (Art.  18.) 

According  to  Article  18  of  the  Regulations  of  1897  for  the 
execution  of  the  law  a  fine  of  from  5  to  50  Bolivianos  as  a  pen- 
alty is  imposed  for  the  use  of  marks  or  emblems  without  regis- 
tration. 

A  circular  of  the  Minister  of  the  treasury  calls  attention  to 
the  fact  that  the  fiscal  interests  of  the  country  are  suffering  from 
the  neglect  to  observe  the  requirements  of  the  trade  mark  law 
on  the  part  of  merchants  and  manufacturers,  very  few  of  whom 
comply  with  the  law  with  respect  to  registration,  or  pay  the  an- 
nual tax  assessed  upon  trade  marks.  Thus  the  few  traders  who 
obey  the  law  seem  to  be  put  in  a  worse  position  than  those  who 
neglect  it,  while  the  treasury  is  deprived  of  a  considerable  in- 
come. The  Minister,  therefore,  requests  that  prefects  of  the 
several  departments  give  due  execution  to  the  law,  which  im- 
poses pecuniary  fines  for  the  benefit  of  the  state  upon  those  who 
use  trade  marks  without  the  sanction  of  registration.  (150  O.  G., 
p.  1045.) 


BRAZIL 

The  area  of  the  Republic  of   Brazil  has  been  calculated  at 
3,218,130  square  miles,  divided  over  the  following  States: 

States  Capitals 

Amazonas    Amazonas 

Ceara    Ceara 

Para   Para 

Maranhao    Maranhao 

Piauhy    Therezina 

Parahyba    Parahyba 

Rio  Grande  do  Norte Natal 

Pernambuco    Pernambuco 

Alagoas   Maceio 

Bikhia    Bahia 

Sergipe Aracaju 

Espirito  Santo      Victoria 

Federal  District   Rio  de  Janeiro 

Rio  de  Janeiro Nictheroy 

Sao  Paulo Sao  Paulo 

Parana    Curityba 

Santa  Catharina    Desterro 

Rio  Grande  do  Sul   Porto  Alegre 

Minas   Geraes    Bello  Horizonte 

Goyaz    4 Goyaz 

Matto  Grosso Cuyaba 


88  BRAZIL 

It  extends  along  the  Atlantic  coast  from  Guyana  in  the  North 
to  the  borders  of  Uruguay  in  the  South,  a  distance  of  about  41,- 
190  miles  and  extends  inland  about  2,500  miles.  The  population 
in  1910  was  20,415,320. 

Brazil  possesses  three  great  rivers.  The  most  remarkable  is' 
the  Amazon ;  next,  the  Paraguay,  (one  of  the  tributaries  of  the 
River  Plata),  and  finally  the  San  Francisco.  The  Amazon  which 
flows  through  the  territory  of  the  Republic  for  a  distance  of 
more  than  500  leagues,  receives  18  affluents,  nearly  all  rivers  of 
the  first  order.  They  afford  uninterrupted  navigation  for 
steamers  for  a  distance  of  7,351  leagues  above  the  first,  falls, 
which  exist  on  the  boundaries  of  the  Province  of  Para  and  Ama- 
zonas.  By  means  of  the  Amazon  and  its  affluents,  it  is  possible 
to  reach  the  Republics  of  Bolivia,  Peru,  Ecuador,  and  Venezuela. 
For  a  quarter  of  a  century  steamers  have  been  running  up  and 
down  this  river  with  the  greatest  regularity,  performing  in  ten 
days  a  distance  of  580  leagues  between  Para  and  Tabitingo  on 
the  frontier  of  Peru. 

COMMERCE — Brazil  is  essentially  an  agricultural  country,  and 
produces  in  the  north  large  quantities  of  India-rubber,  cocoa, 
sugar  cane,  piassava,  nuts  and  medicinal  plants.  The  central 
states  principally  produce  cotton,  sugar  and  tobacco,  whilst  in 
the  provinces  of  Minas  Geraes  Espirito  Santo,  Rio  de  Janeiro, 
and  Sao  Paulo  coffee  is  raised,  and  in  the  south,  cereals,  hides, 
etc.  The  country  abounds  in  mineral  wealth,  gold,  silver,  iron, 
coal  and  copper  mines,  besides  diamonds  and  other  precious 
stones. 

MONEY,  WEIGHTS  AND  MEASURES — 1  milreis  (1,000  reis)=2s. 
3d.,  or  30  cents. 

For  weights  and  measures,  the  metrical  system  has  been  ad- 
opted. 

Laws. 

October  14,  1887,  and  September  24,  1904. 

Term. 

The  registration  shall  be  valid  for  all  purposes  for  fifteen  years, 
at  the  end.  of  which  time  it  can  be  renewed,  and  so  on  there- 
after. 

The  registration  shall  be  regarded  as  null  and  void,  if  the 
owner  of  the  registered  mark  shall  not  make  use  of  it  within  the 
terms  of  three  years.  (Art.  11.) 

What  May  be  Registered. 

The  producer  or  merchant  has  the  right  to  distinguish  his 
merchandise  or  products  by  means  of  special  marks.     (Art.  1.) 
Industrial  and  trade  marks  may  consist  of  everything  which 


BRAZIL  89 

this  law  does  not  prohibit  and  which  may  distinguish  articles 
from  others,  identical  or  similar,  of  different  origin. 

Any  special  or  common  denomination,  partnership  designation 
or  signature  and  letters  or  ciphers  only,  will  serve  for  this  pur- 
pose if  invested  with  a  distinctive  form.  (Art.  2.) 

The  Following  Cannot  Be  Registered. 

1.  Coats  of  arms,  armorial  bearings,  decorations  or  insignia, 
public  or  official,  domestic  or  foreign,  when  their  use  has  not 
been  duly  authorized. 

2.  A  commercial  or  partnership  name  which  the  petitioner  can- 
not lawfully  use. 

3.  The  indication  of  a  fixed  locality  or  establishment  which 
is  not  that  of  the  original  of  the  article,  whether  there  be  joined 
to  this  indication  a  fictitious  name  or  another's  name  or  not. 

4.  Words,  images  or  representations  which  involve  offense  to 
individuals  or  to  public  decorum. 

5.  The  reproduction  of  another  mark  already  registered  for  an 
article  of  the  same  kind. 

6.  Total  or  partial  imitation  of  a  mark  already  registered  for 
a  product  of  the  same  kind  which  may  mislead  or  confuse  the 
buyer.     The  possibility  of  error  or  confusion  will  be  considered 
to  be  verified  whenever  the  differences  of  the  two  marks  cannot 
be  recognized  without  comparison  of  attentive  examination.  (Art. 

8.) 

Mode  of  Application. 

To  obtain  registration  a  petition  by  the  party  interested,  or 
his  attorney,  is  necessary,  accompanied  by  three  samples  of  the 
mark,  giving  a  full  explanation  and  description  of  the  mark;  a 
declaration  of  the  article  of  industry  or  trade  for  which  the 
mark  is  intended ;  the  full  name,  address  and  occupation  of  the 
applicant;  and  certified  copy  of  the  home  registration. 

It  is  not  possible  to  obtain  in  Brazil  a  better  protection  than 
that  in  the  country  of  origin,  and  the  claims  are  limited  to  those 
set  forth  in  the  certificate  of  home  registration. 

In  case  the  owner  of  a  mark  applies  for  registration  of  a  trade 
mark  not  registered  in  the  home  country,  he  may  register  the 
same  by — 

1.  Furnishing  a  certificate  showing  that  the  mark  has  not  been 
registered  in  the  home  country. 

2.  A  legal  document  showing  that  the  applicant  has  a  com- 
mercial or  industrial  establishment  in  the  country  where  he  reg- 
isters. 

Both  of  these  documents  must  be  legalized  by  a  Brazilian  Con- 
sul. 

Foreigners  who,  instead  of  depositing  the  certificate  of  regis- 
tration made  in  their  respective  country,  petition  directly  the 


QO  BRAZIL 

registration  of  their  mark  in  Brazil,  shall  enjoy  the  guaranties 
of  the  present  law. 

As  soon  as  a  petition  is  presented  for  registration  the  sec- 
retary of  the  Junta  Commercial  will  give  the  party  a  receipt,  and 
when  the  registration  is  ordered  he  will  certify  to  the  same. 

Within  thirty  days  from  date  of  registration  the  applicant  shall 
publish  in  the  official  newspaper,  giving  a  full  description  of  the 
mark,  etc.  The  description  of  the  mark,  the  respective  certificate 
copied  in  full  from  one  of  the  samples  which,  with  the  other 
from  the  newspaper,  he  shall  deposit  in  the  Junta  Commercial  of 
Rio  de  Janeiro  within  sixty  days,  reckoned  from  the  same  date. 

Assignments. 

The  mark  can  only  be  transferred  together  with  the  product 
of  industry  or  trade  for  which  it  has  been  adopted  after  it  has 
been  duly  entered  in  the  register,  upon  examination  of  authentic 
documents. 

A  like  note  shall  be  made  should  the  firms  be  altered  and  the 
mark  still  continue  to  be  used.  In  both  cases  publication  is  neces- 
sary. (Art.  12.) 

Penalties. 

The  following  persons  shall  be  punished  with  imprisonment 
from  six  months  to  one  year  and  a  fine,  for  the  use  of  the  State, 
of  500  to  5,000  milreis : 

1.  Whoever  uses  a  legal  mark  of  another  person  on  products 
of  false  origin. 

2.  Whoever  uses  a  wholly  or  partly  counterfeited  mark  be- 
longing to  another  person. 

3.  Whoever   sells  or  offers  for  sale  articles  bearing  a  legal 
mark,  the  owner  of  which  is  not  the  producer  of  said  articles. 

4.  Whoever  sells  or  offers  for  sale  articles  bearing  a  mark 
wholly  or  partly  counterfeited  or  belonging  to  another. 

5.  Whoever  reproduces  wholly  or  in  part,  by  whatever  means, 
any  industrial  or  trade  mark  duly  registered  and  published  with- 
out permission  of  the  owner  or  his  legal  representative. 

f>.  Whoever  imitates  an  industrial  or  trade  mark,  in  such  a 
manner  that  the  buyer  may  be  deceived. 

7.  Whoever  uses  a  mark  so  imitated. 

8.  Whoever  sells  or  offers  for  sale  articles  bearing  an  imitated 
mark. 

9.  Whoever  uses  a  commercial  or  firm  name  which  does  not 
belong  to  him,  whether  it  forms  a  part  of  a  registered  mark  or 
not.     (Art.  13.) 

The  following  persons  shall  be  punished  with  a  fine  of  100  to 
to  500  milreis  for  the  use  of  the  State : 

1.  Whoever  without  due  authority,  uses,  as  an  industrial  or 


BRAZIL  91 

trade  mark,  arms,  armorial  bearings,  or  public  or  official  insignia, 
domestic  or  foreign. 

2.  Whoever  uses  a  mark  which  offends  public  decorum. 

3.  Whoever  uses  an  industrial  or  trade  mark  which  contains 
an  indication  of  a  locality  or  establishment  which  is  not  that  of 
the  place  of  origin  of  the  merchandise  or  product,  whether  there 
be  joined  to  this  indication  another's  name  or  a  fictitious  one  or 
not. 

4.  Whoever  sells  or  offers  for  sale  merchandise  or  products 
bearing  marks  such  as  are  set  forth  in  Nos.  1  and  2  of  this  ar- 
ticle. 

5.  Whoever  sells  or  offers  for  sale  merchandise  or  products 
such  as  are  set  forth  in  No.  3.     (Art.  14.) 

Whoever  uses  a  mark  containing  anything  personally  offensive, 
or  who  sells  or  offers  for  sale  articles  bearing  such  a  mark,  shall 
be  visited  with  the  penalties  of  the  preceding  article.  (Art. 
15.) 

Repetition  of  the  offenses  shall  be  punished  with  double  the 
penalties. 

Requirements. 

Power  of  attorney,  legalized  by  Brazilian  consul,  10  copies  of 
each  mark ;  full  description  of  each  mark  with  claims  and  in- 
dication of  goods;  home  registration  legalized  by  Brazilian  con- 
sul. 

When  the  owner  of  the  mark  applies  for  registration  of  a  trade 
mark  not  registered  in  the  home  country  he  must  file  the  follow- 
ing documents :  Power  of  attorney  legalized  by  the  Brazilian 
consul  and  certificate  from  the  Patent  Office  showing  that  the 
trade  mark  has  not  been  registered ;  document  showing  that  ap- 
plicant has  a  commercial  or  industrial  establishment  in  the  country 
where  he  resides. 

(See  Form  5,  B.  Singer's  Book  of  Forms.) 

Laws  in  Force  to  Prevent  the  Sale  or  Importation  of  Goods 
Bearing  a  False  Indication  of  Origin. 

The  laws  in  force  prohibit  the  sale,  but  not  the  importation 
of  goods  bearing  a  false  indication  of  origin.  However,  the  im- 
portation of  such  goods  can  also  be  prevented  since  any  manufac- 
turer or  trader  in  similar  articles,  established  in  the  place  pur- 
porting to  be  the  place  of  origin  of  the  imported  goods,  can  have 
them  seized  and  detained.  The  falsification  and  imitation  of  reg- 
istered trade  marks  and  the  sale  or  exposition  for  sale  of  goods 
bearing  falsified  or  imitated  registered  trade  marks  are  punish- 
able offenses.  Foreigners  receive  this  protection  for  trade  marks 
registered  in  their  country  if  thei/  State  grants  reciprocal  treat- 
ment to  Brazilian  trade  marks  or  if  it  belongs  to  the  Industrial 


92  BRAZIL 

Property  Union.  It  is  not  in  the  power  of  Representatives  of 
Foreign  Governments  to  take  steps  to  enforce  the  laws.  To  take 
legal  proceedings  the  party  must  be  interested,  i.  e.,  a  manufac- 
turer or  trader.  The  Customs  Authorities  can  seize  imported 
goods  if  their  origin  is  suspicious,  though,  in  view  of  the  string- 
ency of  the  Customs  Regulations  which  require  the  origin  of  all 
articles  to  be  stated  in  the  Consular  invoices  (which  must  ac- 
company all  imported  goods),  false  indications  should  be  ex- 
tremely difficult.  Beyond  those  already  mentioned,  no  special 
steps  are  taken  to  prevent  the  importation  of  goods  bearing  a 
false  indication  of  origin.  No  requirements  are  in  force  as  to 
the  marking  of  imported  goods  to  show  the  place  of  origin. 
Marking  of  Goods :  "Marca  Registada." 

Priority. 

Registration  under  the  Brazilian  law  is  the  sole  foundation  of 
the  right  to  exclusive  use.  Priority  of  registration  confers  super- 
iority of  right.  It  is  only  when  conflicting  trade  mark  applica- 
tions are  filed  simultaneously  that  priority  of  use  is  material.  In 
such  a  case  the  applicant  who  can  show  the  earliest  use  is  entitled 
to  registration. 

Pure  Food  and  Drug  Law. 

The  law  requires  that  all  proprietary  remedies  for  introduction 
into  Brazil  be  certified  by  licensed  druggists  in  the  country  of 
manufacture;  consequently,  importers  who  desire  to  have  their 
goods  introduced  into  Brazil  must  furnish  a  formula  certified  by 
licensed  druggists. 

International  Convention. 

The  National  Congress  has  issued  the  following  decree: 
Decree  declaring  the  provision  of  Article  33,  No.  4,  of  Law 
No.  1236  of  September  24,  1904,  inapplicable  to  marks  filed  at 
the  International  Bureau  at  Berne  by  countries  which  have  ad- 
hered or  shall  in  the  future  adhere  to  the  Arrangement  of  Ma- 
-drid  of  1891. 

(No.  2085  of  August  6,  1909.) 

We,  the  President  of  the  Republic  of  the  United  States  of 
Brazil, 

Make  known  that  the  National  Congress  has  decreed  and  that 
we  have  sanctioned  the  following: 

Article  1 — The  provision  of  Article  33,  No.  4,  of  the  law  No. 
1236  of  September  24,  1904,  is  not  applicable  to  marks  filed  at 
the  International  Bureau  of  Berne  bv  the  countries  which  have 
adhered  or  shall  adhere  hereafter  to  the  Arrangement  of  Madrid 
of  1891. 


BRITISH  GUIANA  93 

Article  2 — Every  decision  admitting  the  deposit  or  registra- 
tion at  the  Junta  of  Commerce  of  Rio  de  Janeiro,  of  an  interna- 
tional mark  of  the  kind  mentioned  in  Article  5  of  the  regulation 
established  by  decree  No.  5424  of  January  10,  1905,  is  subject  to 
an  appeal  to  the  Supreme  Federal  Tribunal ;  this  appeal  is  within 
the  right  of  anyone  who  finds  himself  injured  by  the  said  deposit 
as  far  as  concerns  a  national  mark  previously  admitted  to  regis- 
tration and  published. 

Single  Paragraph — This  appeal  must  be  lodged  within  a  period 
of  five  days  from  the  date  of  the  publication  of  the  decision  ac- 
cepting the  deposit;  but  it  will  commence  to  run  30  days  later 
if  the  injured  party  does  not  reside  in  the  City  of  Rio  de  Janeiro 
and  has  not  a  special  attorney  there. 

Article  3 — All  contrary  provisions  are  revoked. 

Rio  de  Janeiro,  August  6,  1909,  88th  year  of  Independence 
and  21st  of  the  Republic. 

(Signed)   NILO  PECANHA, 
FRANCISCO  SA. 

According  to  the  above  decree  the  provision  of  the  Brazilian 
law  requiring  the  publication  of  trade  mark  applications  in  the 
Diario  Official  shall  not  be  applicable  to  international  marks. 

The  decree  further  provided  that  every  decision  admitting  an 
international  mark  to  registration  is  subject  to  appeal  to  the  Su- 
preme Federal  Court  by  any  owner  of  a  national  (Brazilian) 
mark  previously  registered  and  published  who  considers  himself 
injured  by  the  registration.  (Bulletin  of  the  Bureau  of  American 
Republics,  1909,  p.  941.) 


BRITISH  GUIANA 

This  colony,  on  the  South  American  continent,  extending  from 
east  to  west  about  280  miles,  includes  the  settlements  of  Dem- 
erara,  Essequibo  and  Berbice. 

The  population  on  December  31,  1911,  was  estimated  at  352,- 
187. 

The  exports  consist  chiefly  of  the  produce  of  the  sugar  cane, 
the  sugar  from  the  country  of  Demerara  being  especially  cele- 
brated for  its  superior  quality,  also  molasses  and  rum. 

MONEY — One  Dollar  (100  cents)=50  cents  United  States. 

WEIGHTS  AND  MEASURES — Same  as  Great  Britain. 

Law. 

Merchandise  Marks  Act  of  1888  is  on  the  lines  of  the  British 
Merchandise  Marks  Act  of  1887.  Custom  Regulations  Aug.  9, 
1898. 


94  BRITISH  HONDURAS 

Duration. 
Unlimited. 

What  May  Be  Registered. 

A  name  of  an  individual,  or  firm,  printed,  impressed  or  woven 
in  some  particular  or  distinctive  manner ;  or 

A  written  signature  or  copy  of  a  written  signature  of  the  in- 
dividual or  firm  applying  for  registration  thereof  as  a  trade  mark ; 
or 

A  distinctive  device,  mark,  brand,  heading,  label,  or  ticket. 

An  invented  word  or  invented  words,  or 

A  word  or  words  having  no  reference  to  the  character  or 
quality  of  the  goods,  and  not  being  a  geographical  name. 

There  may  be  added  to  any  one  or  more  of  the  essential  par- 
ticulars mentioned  in  this  section  any  letter,  words,  or  figures,  or 
combination  of  letters,  words,  or  figures,  or  any  of  them,  but  the 
applicant  for  registration  of  any  such  additional  matter  must 
state  in  his  application  the  essential  particulars  of  the  trade  mark, 
and  must  disclaim  in  his  application  any  right  to  the  exclusive 
use  of  added  matter,  and  a  copy  of  the  statement  and  disclaimer 
shall  be  entered  on  the  register. 

Requirements. 

Power  of  attorney,  legalized  by  British  Consul ;  a  certificate  of 
home  registration  verified  by  affidavit  or  statutory  declaration  of 
the  proprietor ;  three  copies  of  the  mark  and  electrotype.  Affi- 
davits and  statutory  .declarations  must  be  sworn  before  a  Notary 
Public  in  the  United  Kingdom  or  before  the  British  Consul,  in 
foreign  countries. 

(Forms  for  application  may  be  obtained  from  B.  Singer's  Of- 
fices.) 


BRITISH  HONDURAS 

British  Honduras  is  the  only  British  dependency  in  Central 
America.  The  area  of  this  colony,  including  the  islands  and 
bays,  is  7,562  square  miles.  The  population  for  1911  was  estim- 
ated at  51,210. 

COMMERCE — The  soil  is  remarkably  fertile  and  produces  ban- 
anas, plantains,  cocoa-nuts,  coffee,  henequen,  limes,  mangoes, 
oranges,  pineapples,  tobacco  and  rubber. 

The  principal  town  is  Belize,  with  a  population  of  about  20,- 
000. 

MONEY,  WEIGHTS  AND  MEASURES — Same  as  Great  Britain. 

Law. 
Merchandise  Marks  Ordinance  No.  3  of  1888. 


BRITISH  HONDURAS  95 

Duration. 
Unlimited. 

W hat  May  be  Registered. 

A  name  of  an  individual,  or  firm,  printed,  impressed,  or  woven 
in  some  particular  or  distinctive  manner ;  or 

A  written  signature  or  copy  of  a  written  signature  of  the  in- 
dividual or  firm  applying  for  registration  thereof  as  a  trade 
mark;  or 

A  distinctive  device,  mark,  brand,  heading,  label,  or  ticket. 

An  invented  word  or  invented  words ;  or 

A  word  or  words  having  no  reference  to  the  character  or  quali- 
ty of  the  goods,  and  not  being  a  geographical  name. 

There  may  be  added  to  any  one  or  more  of  the  essential  par- 
ticulars mentioned  in  this  section  any  letter,  words,  or  figures,  or 
combination  of  letters,  words,  or  figures,  or  any  of  them,  but  the 
applicant  for  registration  of  any  such  additional  matter  must 
state  in  his  application  the  essential  particulars  of  the  trade  mark, 
and  must  disclaim  in  his  application  any  rights  to  the  exclusive 
use  of  added  matter,  and  a  copy  of  the  statement  and  disclaimer 
shall  be  entered  on  the  register. 

Requirements. 

Power  of  attorney;  a  certificate  of  home  registration  verified 
by  affidavit  or  statutory  declaration  of  the  proprietor;  three 
copies  of  the  mark  and  electrotype. 

Offenses  and  Penalties. 

(1)  Every  person  who — 

(a)   forges  any  trade  mark;  or 

(&)  falsely  applies  to  goods  any  trade  mark  or  any  mark 
so  nearly  resembling  a  trade  mark  as  to  be  calculated  to  de- 
ceive ;  or 

(c)  makes  any  die,  block,  machine  or  other  instrument 
for  the  purpose  of  forging,  or  of  being  used  for  forging  a 
trade  mark ;  or 

(rf)   applies  any  false  trade  description  to  goods;  or 

(e)  disposes  of  or  has  in  his  possession  any  die,  block, 
machine  or  other  instrument  for  the  purpose  of  forging  a 
trade  mark;  or 

(/)  causes  any  of  the  things  above  in  this  section  men- 
tioned to  be  done,  shall,  subject  to  the  provisions  of  this 
Ordinance,  and  unless  he  proves  that  he  acted  without 
intent  to  defraud,  be  guilty  of  an  offense  against  this  Or- 
dinance. 

(2)  Every  person  who  sells,  or  exposes  for,  or  has  in  his  pos- 
session for,  sale,  or  any  purpose  €f  trade  or  manufacture,  any 


96  BRITISH  NORTH  BORNEO 

goods  or  things  to  which  any  forged  trade  mark  or  false  trade 
description  is  applied,  or  to  which  any  trade  mark  or  mark  so 
nearly  resembling  a  trade  mark  as  to  be  calculated  to  deceive  is 
falsely  applied,  as  the  case  may  be,  shall,  unless  he  proves — 

(a)  That  having  taken  all  reasonable  precautions  against 
committing  an  offense   against  this  Ordinance,  he  had  at 
the  time  of  the  commission  of  the  alleged  offense  no  reason 
to  suspect  the  genuineness  of  the  trade  mark,  mark,  or 
trade  description ;  and 

(b)  That  on  demand  made  by  or  on  behalf  of  the  pros- 
ecutor, he  gave  all  the  information  in  his  power  with  re- 
spect to  the  persons  from  whom  he  obtained  such  goods  or 
things;  or 

(c)  That  otherwise  he  had  acted  innocently; 
be  guilty  of  an  offense  against  this  Ordinance. 

(3)  Every  person  guilty  of  an  offense  against  this  Ordinance 
shall  be  liable — 

(i)  on  conviction  on  information  in  the  Supreme  Court, 
to  imprisonment,  with  or  without  hard  labor,  for  a  term  not 
exceeding  two  years,  or  to  fine,  or  to  both  imprisonment  and 
fine;  and 

(M)  on  summary  conviction  to  imprisonment,  with  or 
without  hard  labor,  for  a  term  not  exceeding  four  months 
or  to  a  fine  not  exceeding  one  hundred  and  fiftv  dollars,  and 
in  the  case  of  a  second  or  subsequent  conviction  to  im- 
prisonment, with  or  without  hard  labor,  for  a  term  not  ex- 
ceeding six  months,  or  to  a  fine  not  exceeding  two  hundred 
and  fifty  dollars;  and 

(m)  in  any  case,  to  forfeit  to  Her  Majesty  every  chattel, 
article,  instrument,  or  thing  by  means  of  or  in  relation  to 
which  the  offense  has  been  committed. 


BRITISH  NORTH  BORNEO 

The  form  of  government  is  practically  the  same  as  in  India, 
or  other  British  colonies.  The  population,  estimated  at  about 
200,000,  is  made  up  of  Malays,  Bajaus,  Sulus,  Filipinos,  various 
tribes  of  Dusuns  of  the  interior,  and  about  50,000  to  55,000  Chin- 
ese on  the  coast  and  planting  estates. 

The  trade  and  commerce  is  of  considerable  importance.  The 
principal  trading  stations  are  Sandakan  (the  capital)  on  the  east 
coast,  and  Jesselton  and  Kudat  on  the  west  coast.  The  imports 
fall  under  the  following  order  of  importance : — Rice,  flour  and 
grain,  cloth,  treasure,  provisions,  opium,  ironware,  spirits  and 
wines,  tobacco,  sugar,  kerosene  oil,  machinery  and  vessels,  oils, 


BRITISH  NORTH  BORNEO  97 

salt,  stationery,  earthenware  and  glassware,  thread  and  yarns, 
fruits  and  vegetables,  tea,  aerated  waters,  building  materials  etc., 
etc.  The  chief  exports  are : — Estate  grown  tobacco,  timber, 
cutch,  coal,  dried  and  shell  fish,  rattan,  sago,  flour,  damar,  wild 
rubber,  birds'  nests,  treasure,  estate  rubber,  copra,  fruits  and 
cocoa-nuts,  live  stock,  etc.,  etc. 

MONEY — One  dollar   (100  cents)  =2s.  4d.=52  cents. 

WEIGHTS  AND  MEASURES — 1  picul  =133^  Ibs.  av. ;  1  kati.= 
\Yz  Ibs.  av. ;  1  tahil  and  1  basin=l/16  kati=l  1/9  oz.  av. ;  gant- 
ang:  gallon;  Mexican  and  British  dollars  are  current  in  British 
North  Borneo. 

Laws. 

Merchandise  Marks  Proclamation  of  1891  and  1893. 

Who  May  Apply. 

Any  person  claiming  the  right  to  exclusive  use  of  any  trade 
mark  either  solely  or  jointly  with  others,  may  apply  to  the  Gov- 
ernor for  leave  to  register  the  same  in  the  "Register  of  Trade 
Marks." 

Mode  of  Application. 

Every  such  application  must  be  accompanied  by  a  facsimile  or 
specimen  of  the  "trade  mark"  sought  to  be  registered,  verified 
by  affidavit :  and  every  such  affidavit  shall  set  forth  the  descrip- 
tion and  nature  of  the  goods  upon  which  such  trade  mark  has 
hitherto  been,  or  is  intended  to  be  used,  and  that  the  deponent 
is  to  the  best  of  his  belief  entitled  solely  or  jointly  with  some 
person  or  other  persons  therein  named  to  the  exclusive  use  of  such 
trade  mark. 

Upon  compliance  with  the  formalities  hereinbefore  prescribed, 
it  shall  be  lawful  for  the  Governor,  if  he  shall  in  his  discretion 
think  fit,  to  grant  the  application  and  to  order  the  registration  of 
the  said  trade  mark  in  the  register  and  the  filing  of  all  affidavits 
transmitted  therewith  in  manner  aforesaid. 

Notice  of  the  registration  of  a  trade  mark  under  this  Proclama- 
tion shall  be  published  in  the  Gazette,  and  the  Register  of  trade 
marks  shall  be  open  to  public  inspection,  at  all  reasonable  times, 
on  payment  of  such  fee  as  may  be  fixed  in  manner  hereinafter 
mentioned. 

It  shall  be  lawful  for  the  Governor,  at  any  time  and  on  such 
grounds  as  he  shall  think  sufficient,  to  cancel  the  registration  of 
any  trade  mark  under  this  Proclamation. 

Fees. 

Registration  of  trade  mark  $5.00 ;  filing  affidavit,  $2.00 ;  office 
copy  of  entry,  $3.00. 


98  BULGARIA 

Requirements. 

Power  of  attorney ;  6  facsimiles  of  the  mark ;  1  electrotype. 
(Forms  for  application  may  be  obtained  from  B.  Singer's  Of- 
fices.) 


BULGARIA 

The  area  consists  of  about  37,860  square  miles — viz.,  Bul- 
garia 24,360,  South  Bulgaria  13,500 — with  a  population  in  1911 
of  4,109,178.  The  people  are  chiefly  engaged  in  agricultural  pur- 
suits and  the  rearing  of  cattle,  sheep  etc.  Coal  and  iron  exist, 
but  mining  is  not  carried  on  to  any  large  extent. 

The  principal  trade  is  in  cereals,  wheat,  rye,  barley,  oats  and 
maize,  wine,  tobacco  and  silk.  Attar  of  roses  is  also  produced  to 
a  very  large  extent ;  the  exports  consist  principally  of  grain,  wool, 
hides  etc.,  cereals  alone  amounting  to  about  80  per  cent,  of  the 
total  export.  The  imports,  principally  from  Austria,  consist  of 
textile  fabrics,  also  coal  and  iron,  metals,  machinery,  colonial 
goods,  timber,  furniture  etc. 

MONEY — 1  Lev.=100  Stotinki=l  Lev.=20  cents. 

WEIGHTS  AND  MEASURES — Metrical  system  is  in  force. 

Law. 
Law  of  January  14th  to  27th,  1904. 

Term. 

The  right  to  the  exclusive  use  of  a  trade  mark  extends  for  a 
term  of  10  years. 

At  the  expiration  of  this  term,  the  registration  can  be  renewed 
by  periods  of  ten  years. 

In  order  to  renew  the  registration  a  written  application  must 
be  filed  in  the  office  within  the  last  year.  (Art.  32.) 

The  marks  whose  registration  is  cancelled,  are  declared  free. 

Toward  the  end  of  the  tenth  year  the  office  shall  notify  the 
owner  of  a  trade  mark  of  the  fact  that  the  term  of  registration 
is  about  to  expire. 

However,  the  failure  to  notify  the  owner  of  a  trade  mark  that 
the  term  for  which  the  latter  has  been  registered  will  soon  ex- 
pire, shall  constitute  no  reason  which  might  be  offered  as  excuse 
for  the  non-renewal  of  the  registration.  (Articles  40-41.) 

W hat  May  Be  Registered. 

Trade  marks  may  consist  of: 

1.  The  stvles  or  firm  names  of  merchants  and  manufacturers. 


BULGARIA  99 

2.  Facsimile   signature   of   merchants   and   manufacturers,   as 
well  as  their  monograms  represented  in  special  forms. 

3.  Arbitrary  denominations  not  connected,  in  any  way,  with 
the  nature  of  the  article  to  which  they  are  to  be  applied  as  trade 
marks. 

4.  Emblems,  stamps  (seals),  vignettes,  figures,  reliefs,  labels, 
wrappers  or  vessels,  forms  ""of  product,  of  their  wrappers  or  of 
their  vessels  (devices,  expressions). 

5.  Letters  or  numerals  combined  in  special  forms,  and 

6.  The  name  of  a  place  in  a  town  or  village  belonging  to  the 
person  who  employs  it  as  the  mark  of  his  products  etc.     (Art. 

1.) 

All  the  inscriptions  which  surround  a  trade  mark  or  which  are 
enclosed  therein,  such  as;  (a)  the  style  of  a  merchant,  provided 
that  said  style  does  not  itself  form  the  trade  mark;  (b)  the  num- 
ber, the  volume,  the  measure,  the  weight,  or  the  capacity  of  the 
goods;  (c)  the  place  or  the  country  where  the  goods  are  manu- 
factured; (c?)  the  manner  in  which  they  are  made  or  obtained; 
(e)  the  material  of  which  they  are  made  or  produced,  etc.,  shall 
constitute  an  integral  part  of  the  trade  mark.  (Art.  2.) 

Requirements. 

Power  of  attorney,  legalized  by  consul  or  U.  S.  Department 
of  State ;  certificate  of  home  registry  not  legalized ;  eight  fac- 
similes; one  electro.  (Form  for  application  can  be  obtained  from 
B.  Singer's  offices.) 

Mode  of  Application. 

The  registration  of  marks  is  effected  in  a  special  Bureau  under 
the  Minister  of  Commerce,  Section  of  Commerce  and  of  Industry, 
called  "Bureau  of  Industrial  Property." 

A  trade  mark  shall  be  registered  pursuant  to  an  application  to 
be  forwarded  to  the  office  of  industrial  property,  written  in  Bul- 
garian, and  containing  an  exact  indication  of  applicant's  name, 
and  first  name,  his  occupation,  and  his  place  of  residence,  a  clear 
and  accurate  description  (in  Bulgarian)  of  the  trade  mark  with 
a  list  of  those  articles  which  are  to  be  designated  by  such  trade 
marks. 

There  must  be  joined  to  this  application  three  copies  of  the 
trade  mark  to  be  registered,  made  on  strong  and  good  paper,  a 
cliche  for  its  reproduction  which  must  not  exceed  10x8x2.2  cm. 
and  any  documents  which  may  be  necessary. 

In  the  Province,  the  application,  accompanied  by  the  necessary 
documents,  may  be  remitted  to  the  Prefect.  The  latter  shall, 
after  having  indicated  the  date  and  the  hour  of  its  reception, 
address  it,  without  delay,  to  the  Minister  of  Commerce  and  of 
Agriculture. 

Applications  for  the  registration  of  foreign  trade  marks  shall 


ioo  BULGARIA 

be  addressed  directly  to  the  Ministry  of  Commerce  and  Agricul- 
ture, Office  of  Industrial  Property. 

The  applications  for  registration,  as  well  as  the  applications 
for  renewal,  are  deposited  personally  by  the  interested  parties 
or  by  their  attorneys.  (Articles  8-13.) 

The  trade  marks  of  foreigners  who  reside  without  the  terri- 
tory of  the  Principality  shall  be  registered  under  the  same  condi- 
tions as  those  of  residents  of  this  country,  provided  that  the  com- 
mercial treaties,  or  else  the  laws  of  the  land  to  which  said  for- 
eigners belong  or  in  which  they  have  their  principal  place  of 
business,  admit  of  reciprocity  in  favor  of  Bulgarian  subjects. 
(Art.  15.) 

Apart  from  the  formalities  provided  by  the  present  law,  the 
following  requirements  also  must  be  complied  with  if  those  trade 
marks  mentioned  in  the  preceding  article  are  to  be  registered : 

1.  The  petition   for  registration   must  be   accompanied  by  a 
certificate  attesting  that  applicant  has  conformed  to  the  condi- 
tions provided  in  the  law  of  the  country  to  which  he  belongs 
for  the  protection  of  the  mark. 

2.  A  declaration  to  the  effect  that  applicant  will  recognize  the 
competency  of  the  courts  of  the  country  in  all  questions  concern- 
ing the  trade  mark  for  which  registration  is  desired;  applicant 
shall  also  appoint  some  person  residing  in  the  principality  to 
take  charge  of  the  trade  marks,  etc. 

3.  Trade  marks  of  this  kind  are  protected  to 'the  same  extent 
and  for  the  same  term  as  in  the  country  where  they  have  been 
originally  registered. 

The  decision  granting  or  refusing  the  registration  of  a  mark 
shall  not  be  taken  by  the  Bureau  less  than  5  days  nor  more  than 
15  days  after  the  day  when  the  demand  has  been  deposited  in 
conformity  with  Articles  11,  12  and  19. 

If  the  mark  deposited  meets  the  conditions  provided  by  the 
present  law  it  is  entered  in  the  register  ad  hoc,  and  a  certificate 
attesting  this  operation  is  delivered  to  the  interested  party. 

The  certificate  of  registration  is  provided  with  a  stamp  of  three 
francs. 

Registration  is  made  by  class,  according  to  the  nature  of  the 
product.  Each  registration  bears  two  numbers — one  general  or- 
dinal number  and  the  other  of  classification. 

Once  the  above  mentioned  certificate  is  delivered,  the  mark  ac- 
companied by  the  necessary  indications,  is  published  in  the  special 
bulletin  forming  a  supplement  to  the  Official  Journal. 

One  of  the  copies  of  the  registered  mark  is  preserved,  duly 
classed  in  the  registers  of  the  Bureau  of  Industrial  Property ;  the 
second  copy  is  preserved  in  the  register  of  the  Commercial  and 
Industrial  Museum,  and  placed  at  the  disposition  of  the  public ; 
the  third  affixed  upon  the  certificate  of  registration  is  remitted 
to  the  interested  party. 


BULGARIA  101 

At  the  time  of  the  registration,  the  priority  is  attributed  to  him 
who  is  the  first  to  file  his  application  to  the  Prefecture  of  the 
Department  or  to  the  Bureau  of  Industrial  Property. 

When  two  or  more  applications  are  made  simultaneously, 
whether  at  the  Prefecture  of  the  Department,  or  at  the  Bureau 
of  Industrial  Property,  they  follow  the  following  order: 

1.  The  applications  of  Bulgarian  subjects  or   foreigners   es- 
tablished in  the  principality. 

2.  Those  of  Bulgarians  established  abroad. 

3.  Those   of    foreigners    living   in   those   countries   admitting 
reciprocity. 

4.  Those  of  foreigners  of  other  countries. 

A  tax  of  50  francs  gold  shall  be  paid  for  each  first  deposit  and 
40  francs  gold  for  each  renewal. 

Independent  of  this  tax  the  applications  must  be  provided  with 
a  stamp  of  50  centimes  and  the  annexes,  with  those  provided  by 
provisions  of  the  Stamp  Law. 

The  registration  taxes  are  paid  to  the  public  cashier,  whose 
receipt  shall  be  joined  to  the  application. 

In  case  of  the  refusal  of  registration,  the  tax  paid  will  be  re- 
funded to  the  party  and  mention  will  be  made  on  the  receipt. 

The  taxes  relative  to  a  mark,  that  for  one  reason  or  another, 
shall  be  in  the  course  of  time  suppressed,  shall  not  be  refunded. 
(Arts.  16  to  20  incl.) 

Refusal  of  Registration. 

The  Office  of  Industrial  Property  shall  refuse  the  registration 
of  a  trade  mark  in  the  following  cases : 

1.  If  the  information  required  by  the  law  does  not  appear  in 
the  application,  or  else  if  the  necessary  documents  and  annexes 
are  not  annexed  to  them. 

2.  If  the  Office  finds  that  the  three  copies  of  the  filed  trade 
mark  are  not  identical. 

3.  If  the  trade  mark  consists,  entirely  or  partially,  of  signs, 
being  contrary  to  good  morals,  to  religion,  or  to  public  order. 

4.  If  the  trade  mark  consists  of  or  if  it  contains  a  represen- 
tation of  the   Sovereign  or  of  the  members  of  his  family,  or 
representations  of  foreign  Sovereigns  or  members  of  their  fam- 
ilies, of  the  National  arms  or  of  their  imitation,  excepting  those 
cases  where  it  can  be  proved  that  applicant  has  obtained  per- 
mission to  use  some  coat  of  arms  as  a  supplement  to  his  trade 
mark. 

5.  If  the   mark  consists   in   photographs   or   drawings   repre- 
senting men  of  State,  without  their  assent,  or  that  of  their  legal 
representatives,   unless   ten   years   have   gone   by   since   the   day 
of  their  decease.  / 

6.  If  the  trade  mark  contains  the  emblem  of  the  Red  Cross, 


IO2  BULGARIA 

or  its  imitation,  or  the  words  "Tcherven  Krest"  (the  red  cross) 
without  the  permission  of  this  Society. 

7.  If  it  consists  of  or  if  it  contains  names  or  first  names  of 
persons  or  of  societies  which  applicant  has  no  right  to  use. 

8.  If  it  contains  or  consists  of  personal  decorations  which  have 
nothing  in  common  with  the  business  for  the  products  of  which 
the  mark  is  intended. 

9.  When  the  mark  consists  in  or  contains   reproductions  of 
medals,  or  else  if  it  refers  to  diplomas  or  copies  of  testimonials 
that  the  depositor  does  not  possess. 

10.  If  the  mark  contains  reproductions  of  medals  and  other 
decorations  connected  with  applicant's  business  which   are  not 
shown  in  their  real  forms  or  are  arranged  so  as  to  over-shadow 
the  trade  mark  itself. 

11.  If  the  trade  mark  consists  of  or  if  it  contains  inscrip- 
tions which  may  give  rise  to  the  belief  that  the  goods  to  which 
it  is  to  be  applied  are  of  local  origin. 

12.  Finally,  if  the  mark  is  an  infringement  of  a  mark  which 
has  already  been   registered,   or  the  registration  of  which  has 
already  been  applied  for  by  a  duly  filed  application,  or  if  it  is  an 
imitation  of  a  previously  registered  trade  mark. 

The  refusal  to  register  a  mark  is  communicated  in  writing  to 
the  interested  party  within  the  delay  foreseen  by  Art.  17. 

If  the  interested  party  is  dissatisfied  with  the  decision  of  the 
Bureau,  he  may  enter  appeal  within  the  delay  of  one  month  from 
the  day  when  the  communication  has  been  made  to  him,  before 
the  Tribunal  of  First  Instance  of  the  district  where  the  demand 
has  been  deposited,  which  must  pronounce  definitely  on  the  dif- 
ference within  a  delay  of  one  month. 

After  the  expiration  of  the  delay  for  appeal,  the  decision  is 
considered  as  definite  and  enters  into  vigor. 

The  Tribunal  shall,  before  the  examination  of  the  question,  in- 
quire the  reasons  that  have  led  the  Bureau  to  refuse  registra- 
tion. 

The  Bureau  shall  give  in  writing,  or  orally,  its  explanations  to 
the  Tribunal. 

The  decision  of  the  Bureau  relative  to  the  refusal  to  register 
a  mark  can  only  be  contested  before  the  Tribunal. 

After  having  been  duly  rgistered  the  trade  mark  shall  become 
the  exclusive  property  of  the  one  who  has  applied  for  its  regis- 
tration, provided  that  it  is  not  contested  before  the  proper  court 
within  one  year  after  the  date  of  its  registration.  (Arts.  22  to  28 
incl.) 

Assignments. 

The  right  of  ownership  to  a  trade  mark  can  be  assigned  at  the 
same  time  with  the  business  to  the  goods  of  which  it  is  applied 
as  distinctive  sign,  if  the  respective  parties  agree  mutually. 


BULGARIA  103 

In  order  that  such  assignment  may  be  valid  against  third  par- 
ties it  must  be  duly  registered  in  the  records  of  the  Office  of 
Industrial  Property. 

All  assignments  shall  be  effected  through  the  Office  of  Indus- 
trial Property  upon- payment  of  a  tax  amounting  to  30  francs 
gold.  The  assignment  shall  be  exempt  from  said  tax  if  the  busi- 
ness is  transferred  together  with  the  trade  mark  to  the  wife  or 
the  minors  of  the  first  owner  of  said  trade  mark.  (Articles 
35-38  incl.) 

Offenses  and  Penalties. 

He  is  considered  guilty  of  infringing  the  present  law  and  shall 
therefore  be  liable  to  the  fines  provided  by  this  law — except  where 
it  is  proved  that  he  has  acted  without  bad  faith — any  person 
who 

(a)  imitates  a  mark  of  another ; 

(6)   uses    a   mark   registered  by   another; 

(c)  employs    an    imitation    of    a   mark    previously    regis- 
tered ; 

(d)  prepares  stamps,  cliches,  machines  and  other  special 
instruments  intended  for  the  imitation  or  counterfeiting  of 
another  mark; 

(e)  places  on  their  goods  false  commercial  inscriptions; 
(/)  employs  the  annotation  "marque  enregistree"  or  "M. 

E."  as  a  mark  or  as  its  supplement ; 

(g)  has  at  disposal  stamps,  cliches,  machines  and  other 
instruments  intended  for  counterfeiting  or  imitating  another 
mark; 

(h)  employs  as  a  mark  or  puts  on  the  papers  of  his  es- 
tablishment without  having  the  right,  the  arms  of  the  prin- 
cipality, those  of  the  Princely  House,  in  any  imitation  what- 
ever of  those  arms  or  the  decorations  of  the  State,  the 
portraits  of  the  Sovereign  or  members  of  his  family ; 

(i)  employs  without  any  authority  the  emblem  of  the  "Red 
Cross,"  its  imitation,  or  the  denomination  "Red  Cross,"  or 
the  portraits  of  statesmen  or  public  men ; 

(£)  allows  to  figure  upon  his  goods,  upon  the  wrappers  or 
upon  the  vessels,  medals,  diplomas,  copies  of  testimonials,  or 
their  imitation,  which  he  does  not  possess,  or  else  repre- 
sents them  in  colors  which  do  not  correspond  with  their 
appearance ; 

(/)  employs,  in  general,  any  kind  of  inscription  or  des- 
ignation which  may  give  rise  to  the  belief  that  the  goods  are 
of  local  origin. 

He  is  considered  equally  guilty  of  infraction  of  the  present 
law  who  shall  sell,  exhibit  or  possess  with  intent  to  sell  for  some 
commercial  or  industrial  purpose,  goods  or  objects  bearing  one 


IO4  BULGARIA 

of  the  signs  or  inscriptions  enumerated  in  paragraphs  b,  c,  e,  f,  h, 
i,  k,  1  of  the  preceding  article,  unless  he  can  prove: 

(a)  that,  notwithstanding  all  the  steps  which  he  has  taken 
in  order  to  avoid  any  infringement  of  the  law,  it  has  been 
impossible  for  him  to  doubt  at  the  time  when  the  infringe- 
ment occurred,  the  authenticity  of  the  mark  which  has  been 
used  or  of  the  commercial  inscription  which  he  has  appro- 
priated for  himself; 

(b)  that,  upon  the  request  made  by  the  party  damaged 
or  in  his  name,   he    (the   infractor)    has   furnished   all  the 
information   that   it   has   been   possible    for   him   to   furnish 
concerning  the  person  who  furnished  him  the  goods  or  the 
objects  in  question; 

(c)  that  he  has  acted  without  bad  faith. 

Any  person  who  shall  be  deemed  guilty  of  the  offenses  enu- 
merated in  Articles  43  and  44  shall  be  punished  by  a  fine  of  from 
500  to  4,000  francs  or  by  imprisonment  for  a  term  of  from  three 
months  to  one  year  to  which  a  fine  of  3,000  francs  may  be  added. 
Besides  the  penalties  provided  in  the  below  mentioned  article,  the 
party  to  whom  the  damage  has  been  caused  shall  also  have  the 
right  to  demand  from  the  offender  indemnity  for  the  sustained 
damages  and  losses.  Upon  the  request  of  the  party  who  has 
suffered  the  damage,  the  court  may  decide  that  the  sentence  be 
published  in  the  "Official  Journal"  for  his  account  and,  at  least, 
in  one  of  those  papers  having  the  largest  circulation  in  the 
country. 

In  every  case  the  court  shall  be  competent  to  order  the  con- 
fiscation of  any  article.,  merchandise,  or  instrument  and,  in  gen- 
eral, of  whatever  may  have  assisted  in  accomplishing  the  of- 
fenses. 

The  Tribunal  which  has  condemned  anyone  by  virtue  of  the 
present  Law,  may  order  the  destruction  of  objects  confiscated  or 
their  sale,  to  the  profit  of  a  benevolent  institution. 

The  marks  or  inscriptions  which  have  caused  the  confiscation 
of  objects  should  be  destroyed  in  the  way  that  shall  have  been 
thought  proper  at  the  moment  when  the  sale  of  the  objects  on 
which  or  on  the  package  or  receptacles  of  which  they  have  been 
affixed  has  been  pronounced. 

Under  the  present  law  all  suits  in  matters  of  infringement 
shall  be  tried  in  the  courts  of  first  instance  (as  first  instance) 
pursuant  to  the  rules  of  abbreviated  procedure. 

Under  the  present  law  action  for  infringement  shall  be  in- 
stituted in  pursuance  of  a  request  made  by  the  interested  party. 

However,  in  case  of  the  infringements  enumerated  in  para- 
graphs d,  e,  g,  k,  1  of  Art.  43  and  of  those  infringements  named 
in  the  same  paragraphs  which  appear  again  in  Art.  44,  actions 


BULGARIA  105 

shall  be  instituted  by  the  Office.  The  written  testimony  prepared 
for  this  purpose  by  the  authorities  shall  then  be  immediately  for- 
warded to  the  competent  courts  and  the  latter  shall  take  all  the 
necessary  measures  to  confiscate,  above  all,  those  articles  which 
have  been  the  cause  of  the  infringement. 

In  case  of  a  repeated  offense  the  penalty  shall  be  doubled. 
If  the  crime  is  committed  within  a  period  of  five  years  from  the 
date  of  the  first  sentence,  it  shall  be  considered  as  constituting  a 
repeated  offense. 

Salaried  employes,  servants  and  others,  will  not  be  prosecuted 
for  infringing  the  present  law  who,  in  committing  the  infringe- 
ment have  acted  for  the  account  of  their  masters  established  in 
the  principality. 

The  Department  of  Customs  forbids  the  importation  of  goods 
which  bear  original  or  imitated  trade  marks  of  Bulgarian  mer- 
chants or  manufacturers  or  false  commercial  inscriptions. 

Goods  marked  with  the  trade  marks  of  merchants  of  this 
country  may  be  admitted  if  they  are  intended  for  the  owners  of 
the  trade  marks  and  if  the  place,  the  town,  or  the  country  where 
the  goods  have  been  bought  or  manufactured  is  clearly  and 
legibly  indicated  in  an  indelible  manner.  The  Department  of 
Customs  shall  confiscate  and  deliver  to  the  judicial  authorities, 
together  with  the  written  testimony  required,  the  trade  marks 
imported  by  third  persons. 

The  Department  of  Customs  shall  act  as  organ  of  the  Ministry 
of  Commerce  and  Agriculture  and  it  shall  correspond  directly 
with  the  latter  in  all  matters  affecting  the  present  law.  (Articles 
43  to  52,  incl.) 

Trade  Marks  on  Imported  Goods. 

The  customs  inspection  provisions  of  this  law  are  being  very 
rigorously  enforced.  If  the  name  of  a  firm  of  importers  is 
marked  upon  the  goods  by  means  of  labels,  it  is  required  that 
the  place  of  manufacture  thereof  be  also  indicated,  for  failure 
of  which  the  goods  are  confiscated.  Similarly  on  each  single 
article,  such  as  a  pen  or  a  pencil,  which  is  marked  with  the  name 
of  the  firm,  their  location  must  be  stamped.  Wares  which  are 
sold  by  measure,  like  laces  and  embroidery,  yarns  and  thread, 
must  have  upon  the  labels  the  name  of  the  firm,  the  place  of 
origin  and  the  exact  measurement  of  the  piece.  Should  the 
customs  officers  find,  upon  strict  examination  of  the  wares,  that 
the  requirements  are  not  exactly  complied  with,  the  goods  are 
confiscated.  In  the  case  of  liquors,  each  bottle  must  indicate, 
besides  the  place  of  origin,  the  contents  and  quality  thereof,  and 
if  upon  analysis  it  is  found  that  the  quality  is  incorrectly  stated, 
the  importer  is  subjected  to  a/ heavy  fine  and  the  goods  are 
confiscated. 


ic6  CANADA 

Laii's  in   Force  to  Prevent   the  Sale  or  Importation   of   Goods 
Bearing  a  False  Indication  of  Origin. 

The  law  does  not  protect  buyers  against  goods  bearing  false 
indications  of  origin,  but  it  prohibits  the  importation  and  sale  or 
exposure  for  sale  of  goods  bearing  the  imitation  of  a  trade  mark 
previously  registered  in  Bulgaria.  The  Ministry  of  Commerce 
and  Agriculture  attends  to  the  strict  application  of  the  law,  and  the 
Customs  Authorities  are  charged  with  its  execution.  Repre- 
sentatives of  foreign  powers  look  after  the  protection  of  the 
interests  of  their  own  subjects,  but  their  co-operation  only  con- 
sists in  accelerating  the  legal  procedure.  The  cost  of  prosecu- 
tion is  not  likely  to  be  very  heavy.  All  goods  imported  must 
bear  an  indication  of  their  origin. 

Marking  Goods:  "Marque  Enregistree"  or  the  abbreviation 
"M.  E." 


CANADA 

Under  this  name  are  now  united,  in  one  government,  all  the 
British  colonies  on  the  North  American  continent,  with  the  ex- 
ception of  Newfoundland.  Their  combined  area  is  computed  at 
3,745,574  square  miles.  The  population  is  seven  and  one-half 
millions. 

MINERAL  PRODUCTS — The  mineral  production  of  the  Dominion 
of  Canada  is  increasing  yearly.  The  yield  of  silver  heads  the 
list,  next  comes  gold,  nickel,  copper,  lead.  Coal  is  mined  and 
petroleum  is  found.  Other  important  items  are  asbestos,  cor- 
undum, natural  gas,  phosphates,  salt,  mica,  talc,  graphite,  pyrites, 
gypsum,  mineral  pigments,  etc.  It  is  anticipated  that  with  the 
present  activity  the  yield  of  gold,  silver,  nickel,  copper  and  lead 
will  rapidly  assume  larger  proportions. 

COMMERCE — The  principal  industry  of  the  Dominion  is  undoubt- 
edly agriculture,  and  cereals  of  all  kinds,  as  well  as  dairy  produce 
and  cattle,  are  raised  to  an  enormous  extent,  and  the  exports 
are  very  considerable;  second  to  these  are  the  timber  trade,  the 
fisheries  and  the  fur  trade. 

MONEY — Canada  (Dominion  of)  1  dollar  (100  cents)  =United 
States  $1.00. 

WEIGHTS  AND  MEASURES — Same  as  Great  Britain,  with  the 
exception  that  the  cwt.  equals  100  Ibs.  and  the  ton  equals  2,000 
Ibs.  avoirdupois. 

Law. 

Act,  R.  S.,  c.  63,  s.  1. 

Duration. 

A  general  trade  mark  once  registered  and  destined  to  be  the 
sign  in  trade  of  the  proprietor  thereof  shall  endure  without  lim- 
itation. R.  S.,  c.  63,  s.  14.  (Sec.  16.) 


CANADA  107 

A  specific  trade  mark,  when  registered,  shall  endure  for  the 
term  of  twenty-five  years,  but  may  be  renewed  before  the  expira- 
tion of  the  said  term  by  the  proprietor  thereof,  or  by  his  legal 
representative,  for  another  term  of  twenty-five  years,  and  so  on 
from  time  to  time;  but  every  such  renewal  shall  be  registered 
before  the  expiration  of  the  current  term  of  twenty-five  years. 
R.  S.,  c.  63,  s.  14.  (Sec.  17.) 

What  May  Be  Registered. 

All  marks,  names,  labels,  brands,  packages  or  other  business 
devices,  which  are  adopted  for  use  by  any  person  in  his  trade, 
business,  occupation  or  calling,  for  the  purpose  of  distinguish- 
ing any  manufacture,  product  or  article  of  any  description  man- 
ufactured, produced,  compounded,  packed  or  offered  for  sale  by 
him,  applied  in  any  manner  whatever  either  to  such  manufac- 
ture, product  or  article,  or  to  any  package,  parcel,  case,  box  or 
other  vessel  or  receptacle  of  any  description  whatsoever  contain- 
ing the  same,  shall,  for  the  purposes  of  this  Act,  be  considered 
and  known  as  trade  marks.  R.  S.,  c.  63,  s.  3.  (Sec.  5.) 

The  Minister  may  refuse  to  register  any  trade  mark  (a)  if  he 
is  not  satisfied  that  the  applicant  is  undoubtedly  entitled  to  the 
exclusive  use  of  such  trade  mark;  (&)  if  the  trade  mark  proposed 
for  registration  is  identical  with  or  resembles  a  trade  mark  al- 
ready registered;  (c)  if  it  appears  that  the  trade  mark  is  cal- 
culated to  deceive  or  mislead  the  public;  (d)  if  the  trade  mark 
contains  any  immorality  or  scandalous  figure;  (^)  if  the  so-called 
trade  mark  does  not  contain  the  essentials  necessary  to  consti- 
tute a  trade  mark,  properly  speaking.  54-55  V.,  c.  35,  s.  1. 
(Sec.  11.) 

The  first  user  is  entitled  to  register,  and  he  alone  can  effect 
a  valid  registration. 

As  a  general  proposition  a  proper  name  cannot  be  registered  in 
Canada  as  a  trade  mairk  unless  it  possesses  distinctive  form,  but 
whenever  a  proper  name  has  been  used  as  a  trade  mark  for  an 
extended  period  of  time,  and  by  such  use  has  acquired  a  secondary 
or  trade  mark  meaning,  it  may  be  registered  by  virtue  of  an  order 
from  the  exchequer  court. 

To  obtain  such  an  order  it  is  necessary  to  advertise  the  trade 
mark  for  some  four  weeks,  to  serve  notice  on  the  Minister  of 
Agriculture  according  to  law,  and  to  comply  in  all  respects  with 
the  usual  court  procedure.  It  is  understood  that  under  the  pres- 
ent practice  the  exchequer  court  will  order  registration  whenever 
a  prima  facie  case  is  presented. 

The  Canadian  system  of  trade  mark  law  is  in  a  sense  a  com- 
promise between  the  English  common  law,  which  recognizes 
the  superior  rights  of  a  first  usqf  of  a  mark,  and  the  principle 
of  title  acquired  through  registration,  in  accordance  with  the  stat- 


io8  CANADA 

ute.  A  registration  is  provided  for  trade  marks  under  the  Cana- 
dian law,  in  favor  of  "The  proprietor  of  a  trade  mark,"  who, 
after  registering  the  mark,  "shall  have  the  exclusive  right  to 
use  the  trade  mark  to  designate  articles  manufactured  or  sold 
by  him."  (Sec.  13.) 

For  fhe  definition  of  the  proprietor  of  a  trade  mark  under  this 
section,  it  appears  to  be  necessary  to  resort  to  the  common  law. 
The  courts  construe  this  to  mean,  he  who  has  first  used  the  mark ; 
that  is  to  say,  only  the  first  user  is  entitled  to  register,  and  he 
alone  can  effect  a  valid  registration.  So,  where  a  mark  has 
been  registered  in  favor  of  one  person,  it  is  possible  for  another 
to  show  prior  use  of  the  mark,  and  upon  such  a  showing  it  is 
proper  to  have  the  entry  of  registration  rectified,  eliminating  the 
claim  of  the  registrant  to  exclusive  use  of  the  mark,  even  though 
the  mark  has  not  been  registered  by  the  first  user.  (De  Kuyper 
vs.  Van  Dulken,  24  Can.  Sup.  Ct.  Rep.,  114.) 

From  this  it  will  be  seen  that  a  certificate  of  registration  is 
merely  prima  facie  evidence  of  the  registrant's  title  to  the  mark, 
such  title  being  subject  to  attack  with  proof  of  paramount  right 
in  some  one  else,  acquired  by  priority  of  use. 

The  provisions  as  to  what  may  be  registered  as  a  trade  mark 
are  purely  negative,  forbidding  registration  to  any  mark  "that 
does  not  contain  the  essentials  necessary  to  constitute  a  trade 
mark,  properly  speaking."  (Sec.  11.)  Thus  for  a  definition  of 
what,  properly  speaking,  may  constitute  a  trade  mark  we  must 
again  revert  to  the  English  common  law.  Only  a  mark  or  sym- 
bol that  will  distinguish  the  article  upon  which  it  is  placed  from 
the  like  goods  manufactured  or  sold  by  another,  can  be  properly 
registered  under  the  Act.  No  property  can  be  acquired  in  a  mark 
recognized  in  a  particular  trade. as  designating  quality,  nor  in 
any  word  that  is  otherwise  merely  descriptive  and  not  distinct- 
ive. (Partlo  vs.  Todd,  17  Can.  Sup.  Ct.  Rep.,  196,  and  King  vs. 
Cruttenden,  10  Ont.  Law  Rep.,  80.) 

Where  a  descriptive  term  has  been  registered  through  the 
inadvertence  of  the  Registrar  or  otherwise,  this  registration  does 
not  give  to  the  registrant  any  right  to  the  exclusive  use  of  the 
mark  registered,  and,  in  a  suit  for  infringement  of  an  alleged 
trade  mark  registered  under  the  statute,  the  defendant  may  show 
that  the  mark  was  not  properly  registered  as  a  trade  mark,  by 
reason  of  its  descriptive  character,  or  its  invalidity  otherwise  as 
a  trade  mark.  (Partlo  vs.  Todd,  17  Can.  Sup.  Ct.  Rep.,  196.) 

How  Registration  May  Be  Effected. 

The  proprietor  of  a  trade  mark  may,  on  forwarding  to  the 
Minister  a  drawing  and  description  in  duplicate  of  such  trade 
made,  and  a  declaration  that  the  same  was  not  in  use  to  his  knowl- 


CANADA  109 

edge  by  any  other  person  than  himself  at  the  time  of  his  adop- 
tion thereof,  tog-ether  with  the  fee  required  by  this  Act  in  that 
behalf,  and  on  otherwise  complying  with  the  provisions  of  this 
Act,  in  relation  to  trade  marks  and  with  the  rules  and  regulations 
made  thereunder,  have  such  trade  mark  registered  for  his  own 
exclusive  use.  (Sec.  13.) 

Thereafter  such  proprietor  shall  have  the  exclusive  right  to  use 
the  trade  mark  to  designate  articles  manufactured  or  sold  by  him. 
R.  S.,  c.  63,  ss.  3,  5,  8  and  13.  (Sec.  13.) 

Under  the  law  as  it  stands  at  the  present  time,  the  exchequer 
court  has  been  given  jurisdiction  over  applications  for  trade  mark 
registration  by  appeal  from  the  Registrar  of  trade  marks,  over 
applications  to  rectify  the  entries  upon  the  register,  and  over  ac- 
tions for  injunction  and  damages.  This  legislation  does  not  in 
any  way  alter,  enlarge,  or  modify  the  effect  of  registration  as  it 
before  existed.  The  registration  may  still  be  attacked  collaterally, 
by  showing,  in  any  case  where  its  validity  comes  in  question, 
that  the  mark  was  not  properly  registered.  (Provident  Chemical 
Works  vs.  Canadian  Chemical  Mfg.  Co.,  4  Ont.  Law  Rep.,  545.) 

Fees. 

The  following  shall  be  the  fees  in  respect  to  registration  under 
this  Act  which  shall  be  paid  to  the  Minister  in  advance,  that  is 
to  say : 

On  every  application  to  register  a  general  trade  mark,  includ- 
ing certificate,  $30.00. 

On  every  application  to  register  a  specific  trade  mark,  includ- 
ing certificate,  $25.00. 

On  every  application  for  the  renewal  of  the  registration  of  a 
specific  trade  mark,  including  certificate,  $20.00. 

Requirements. 

Declaration  in  duplicate;  description  of  mark,  stating  whether 
it  is  intended  for  use  as  a  general  or  specific  one;  four  copies 
of  the  mark. 

Unlawful  Use  of  Trade  Marks. 

Every  other  person  other  than  the  proprietor  of  any  trade  mark 
who,  with  intent  to  deceive  and  to  induce  any  person  to  believe 
that  any  article  of  any  description  whatsoever,  was  manufactured, 
produced,  compounded,  packed  or  sold  by  the  proprietor  of  such 
trade  mark  (a)  marks  any  such  article  with  any  trade  mark  reg- 
istered under  the  provisions  of  this  act,  or  with  any  part  of  such 
trade  mark,  whether  by  applying  such  trade  mark  or  any  part 


no  CANADA 

thereof  to  the  article  itself  or  to  any  package  or  thing  containing 
such  article,  or  by  using  any  package  or  thing  so  marked  which 
has  been  used  by  the  proprietor  of  such  trade  mark;  or  (ft) 
knowingly  sells  or  offers  for  sale  any  such  article  marked  with 
such  trade  mark  or  with  any  part  thereof;  is  guilty  of  an  in- 
dictable offense  and  liable  for  each  offense  to  a  fine  not  exceeding 
one  hundred  dollars  and  not  less  than  twenty  dollars. 

Such  fine  shall  be  paid  to  the  proprietor  of  such  trade  mark, 
together  with  the  costs  incurred  in  enforcing  and  recovering  the 
the  same. 

Every  complaint  under  this  section  shall  be  made  by  the  pro- 
prietor of  such  trade  mark,  or  by  some  one  acting  on  his  be- 
half and  thereunto  duly  authorized.  R.  S.,  c.  63,  s.  17.  (Sec.  21.) 

In  criminal  prosecution,  for  infringement  of  a  registered  trade 
mark,  it  is  a  good  defense  that  the  mark  registered  was  not  prop- 
erly so  registered  because  descriptive.  (King  vs.  Cruttenden,  10 
Ont.  Law  Rep.,  80.) 

In  practice,  the  registrar  rejects  applications  for  words  that 
are  recognized  as  descriptive  and  indicative  of  grade,  quality 
or  other  characteristics  of  the  goods,  geographical  terms  and 
proper  names,  except  when  the  last  are  presented  in  some  par- 
ticular and  distinctive  fashion.  These  are  the  marks  that  have 
been  commonly  recognized  for  many  years,  in  English  and  Am- 
erican law,  as  not  properly  the  subject  of  trade  mark  protection. 
While  the  trade  mark  statutes,  both  of  Great  Britain  and  the 
United  States,  expressly  exclude  from  registration  marks  that 
are  objectionable  on  the  above  grounds,  the  same  tests  of  regis- 
trability  have  been  adopted  by  the  registrar  in  Canada  to  govern 
his  actions,  under  the  more  general  provisions  of  the  Canadian 
law. 

The  registered  proprietor  of  a  trade  mark  may  maintain  an 
action  under  the  statute,  far  any  fraudulent  use  or  imitation  of 
his  trade  mark  (Sec.  19,  and  the  law  refuses  any  action  for  in- 
fringement, without  such  registration.  (Sec.  20.) 

The  unauthorized  use,  by  any  one  other  than  the  proprietor, 
of  any  registered  mark,  with  intent  to  deceive,  or  of  any  part  of 
such  mark,  is  a  penal  offense,  punished  by  a  finejof  from  twenty 
to  one  hundred  dollars  to  be  paid  to  the  proprietor  of  the  mark. 
(Sec.  21.)  Although  no  suit  for  infringement  of  trade  mark 
can  be  instituted,  except  after  registration  thereof  under  the  stat- 
ute, nevertheless  the  common  law  doctrine  of  unfair  competi- 
tion is  fully  recognized  in  the  Canadian  law.  Thus  the  Canadian 
supreme  court  has  quoted  with  approval,  the  rule  laid  down  by 
the  British  house  of  lords,  that  no  one  has  the  right  to  sell  his 
goods  as  the  goods  of  a  rival  trader,  and  cannot,  therefore,  use 
any  mark,  whereby  he  will  induce  purchasers  to  believe  that  the 


CANADA  i i i 

goods  he  sells  are  the  goods  of  another.  It  applied  the  principle 
to  restrain  the  use  of  the  name  "Boston"  upon  rubber  boots  and 
shoes,  in  a  way  to  cause  it  to  be  supposed  that  they  were  the 
goods  of  the  company  first  to  make  use  of  that  name.  (Boston 
Rubber  Shoe  Co.  vs.  Boston  Rubber  Co.  of  Montreal,  32  Can. 
Sup.  Ct.  Rep.,  315.) 

The  Ontario  court  of  appeals  has  recognized  the  same  prin- 
ciple while  refusing  to  apply  it  in  the  case  before  the  court,  upon 
the  ground  that  the  descriptive  term  there  under  discussion  had 
not  acquired  a  secondary  meaning  as  indicative  of  the  goods  of 
the  plaintiff.  (Gillett  vs.  Lumsden,  8  Ont.  Law  Rep.  168.) 

The  principle  was  further  illustrated,  in  a  case  where  no  reg- 
istered trade  mark  was  involved,  and  the  name  in  question  was 
purely  a  geographical  one.  From  the  year  1839,  the  water  of  a 
certain  spring  at  Caledonia,  Canada,  had  been  known  as  Caledonia 
water,  and  since  1876  the  term  had  indicated  the  water  of  the 
plaintiff,  who  was  the  owner  of  the  spring.  Another  party  be- 
gan to  put  out  on  the  market  the  product  of  artesian  wells  driven 
in  the  same  locality,  under  the  name  of  "Water  from  New  Springs 
at  Caledonia."  An  action  was  brought  to  restrain  this  use  of 
the  name  Caledonia,  on  grounds  of  unfair  competition,  but, 
there  being  no  imitation  of  label  or  makeup,  it  was  held  that  the 
defendant  had  sufficiently  distinguished  his  article  from  that  of 
of  the  plaintiff,  and  that  no  cause  of  action  existed.  (Grand 
Hotel  Company  of  Caledonia  vs.  Wilson,  5  Ont.  Law  Rep.,  141.) 

A  Canadian  case  involved  the  right  to  the  use  of  the  word  "Mil- 
waukee" as  a  designation  for  beer  manufactured  in  Montreal. 
The  action  was  instituted  by  a  Milwaukee  brewer  and  was  un- 
successful; the  court  practically  held  that  the  plaintiff  had  no 
standing,  inasmuch  as  the  term  was  generic  and  the  plaintiff  was 
not  the  only  person  in  the  beer  business  in  Milwaukee,  but  de- 
nied the  application  also  upon  the  ground  that  there  was  no 
deception,  inasmuch  as  the  place  of  manufacture  was  prominently 
displayed  in  connection  with  the  word  objected  to.  (Pabst  Brew- 
ing Co.  vs.  Eckers,  21  Quebec  Supreme  Court,  545.) 

Assignment. 

Every  trade  mark  registered  in  the  office  of  the  minister  shall 
be  assignable  in  law. 

On  the  assignment  being  produced,  and  the  fee  by  this  Act 
prescribed  therefor  being  paid,  the  Minister  shall  cause  the  name 
of  the  assignee,  with  the  date  of  assignment  and  such  other  de- 
tails as  he  sees  fit,  to  be  entered  in  the  margin  of  the  register  of 
trade  marks  on  the  folio  where  such  trade  mark  is  registered. 
(R.  S.,  c.  63,  s.  16.) 


H2  CANADA 

TRADE    MARKS.— GOLD    AND    SILVER  WARE 

7-8  EDWARD  VII. 

Chap.  30. 

An  Act  respecting  the  sale  and  marking  of  manufactures  of  Gold 
and  Silver,  and  Gold  and  Silver  Plated  Ware.  Assented  to 
2oth  July,  1908. 

Gold  and  Silver. 

This  section  applies  only  to  articles  composed,  wholly  or  partly, 
of  gold,  silver,  or  any  alloy  of  gold  or  silver,  which  are  made 
or  sold  in  Canada  by  or  brought  into  Canada  by  dealers. 

If  such  an  article  bears  any  mark  it  must  have  applied  to  it 
the  following  marks: 

(a)  A  mark  or  marks  truly  and  correctly  indicating  in 
the  manner  required  by  this  Act,  the  quality  of  the  gold, 
silver  or  alloy,  hereinafter  called  a  quality  mark;  and  also 

(b)  A  trade  mark  or  trade  marks  registered  in  accordance 
with  The  Trade  Mark  and  Design  Act. 

If  the  article  bears — 

(a)  Hall  marks  lawfully  applied  according  to  the  laws  of 
the  United  Kingdom  of  Great  Britain  and  Ireland;  or 

(&)  Marks  applied  by  the  Government,  or  under  the  laws 
of  any  foreign  country,  to  indicate  the  quality  of  the  gold, 
silver  or  alloy;  and — 

(c)  In  both  cases,  if  all  the  other  provisions  of  this  Act 
have  been   compiled   with   as   regards   the  article ;   it   need 
not  have  applied  to  it  any  of  the  marks  mentioned  in  sub- 
section 2  of  this  section. 

If  the  article  bears  a  trade  mark  registered  in  accordance  with 
The  Trade  Mark  and  Design  Act  and  a  quality  mark,  or  if  it 
bears  any  of  the  marks  defined  by  paragraphs  (a)  and  (&)  of 
subsection  3  of  this  section,  it  may  also  have  applied  to  it  any 
or  all  of  the  following  marks — 

(a)  Numerals  intended  to  indicate  pattern ; 

(b)  The  name  or  initials  of  a  dealer; 

(c)  Any  other  mark  not  calculated  to  mislead  or  deceive 
if  such  marks  are  not  incorporated  with  any  quality  mark. 
(Art.  9.) 

Gold. 

It  shall  not  be  lawful  for  a  dealer  to  make  or  to  sell,  or  to 
bring  into  Canada,  any  article  purporting  to  be  wholly  or  par- 
tially composed  of  gold  or  of  any  alloy  of  gold,  if  the  article 


CANADA  113 

hjas  applied  thereto  any  mark  indicating  or  purporting  or  in- 
tended to  indicate  the  gold  in  the  article  to  be  of  less  than  nine 
karats  in  fineness,  or  consisting  of  or  including  the  words  Gold, 
Solid  Gold,  Pure  Gold,  U.  S.  Assay,  or  other  words  purporting 
to  describe  the  gold  or  alloy  of  which  the  article  is  composed. 
(Art.  10.) 

As  respects  articles  composed,  in  whole  or  in  part,  of  gold  or 
of  any  alloy  of  gold — 

(a)  Marks  indicating  the  quality  of  gold  or  alloy  of  gold 
used  in  the  construction  of  the  article  shall  state  the  fineness 
of  the  gold  in  karats,  thus :     12K,  18K,  or  as  the  case  may 
be; 

(b)  The  number  of  karats  so  stated  shall  bear  the  same 
proportion  to  twenty-four  karats  as  the  weight  of  the  gold 
in  the  metal  or  alloy  bears  to  the  gross  weight  thereof ;  that 
is  to  say,  18K  shall  be  deemed  to  mean  that  in  the  com- 
position there  are  eighteen  parts  of  pure  gold  and  six  parts 
of  other  ingredients ;  and — 

(c)  The  actual  fineness  of  the  gold  or  alloy  of  gold  of 
which  the  article  is  composed  shall  not  be  less  than  the  said 
proportion — • 

(»')    By  more  than  one-half  of  a  karat,  if  solder  is  used,  or 
(n)    By  more  than  one-quarter  of  a  karat,  if  solder  is  not 
used.     (Art.  11.) 

Silver. 

It  shall  not  be  lawful  for  a  dealer  to  make  or  to  sell  or  to 
bring  into  Canada,  any  article  purporting  to  be  wholly  or  partly 
composed  of  silver  or  of  any  alloy  of  silver,  which  has  applied 
thereto  any  mark  indicating,  or  purporting  or  intended  to  in- 
dicate, that  the  metal  or  alloy  of  which  such  article  is  composed 
is  of  higher  quality  than  it  really  is. 

The  marks  Silver,  Sterling  or  Sterling  Silver,  Coin  or  Coin 
Silver,  or  any  colourable  imitation  thereof,  or  any  other  mark 
intended  to  suggest  such  a  quality,  shall  not  be  applied  to  any 
such  article  or  part  thereof,  if  the  metal  or  alloy  of  which  such 
article  or  part  is  composed  contains  silver  in  less  proportion  than 
nine  hundred  and  twenty-five  parts  of  pure  silver  in  every  one 
thousand  parts  of  such  metal  or  alloy. 

As  respects  articles  composed  in  whole  or  in  part  of  any  alloy 
of  silver  of  a  lower  quality  than  sterling  silver — 

(a)  Any  marks  indicating  the  quality  of  silver  or  alloy  of 
silver  used  in  such  articles  shall  state  the  fineness  of  the  silver 
in  decimals,  thus :  .800,  .900,  or  as  the  case  may  be ; 

(&)  The  decimal  quality  mark,  so  stated,  shall  bear  the 
same  proportion  to  unity  as  the  weight  of  the  silver  in  the 
metal  or  alloy  bears  to  the  gross  weight  thereof;  that  is  to 


H4  CANADA 

say,  .900  shall  be  deemed  to  mean  that  in  the  composition 
there  are  900  parts  of  pure  silver  and  100  parts  of  other  in- 
gredients ;  and — 

(c)  The  actual  fineness  of  the  silver  or  alloy  of  silver  of 
which  the  article  is  composed  shall  not  be  less  than  the 
said  proportion — 

(i)  By  more  than  25  parts  in  1,000  when  solder  is  used; 
or — 

(«)  By  more  than  10  parts  in  1,000  when  solder  is  not 
used.  (Art.  12.) 

»  Gold  and  Silver  Plated   Ware. 

In  the  case  of  articles  which  are  made  in  whole  or  in  part  of 
an  inferior  metal  having  deposited  or  plated  thereon,  or  brazed 
or  otherwise  affixed  thereto,  a  plating,  covering,  or  sheet  com- 
posed of  gold  or  of  silver,  or  of  an  alloy  of  gold  or  of  silver, 
such  articles  being  known  in  the  trade  as  rolled  gold  plate,  gold 
filled,  gold  plate,  silver  plate,  silver  filled,  gold  electroplate,  sil- 
ver electroplate,  or  by  any  similar  designation,  and  in  the  case 
of  articles  of  like  nature  brought  under  the  provisions  of  this 
section  by  regulation  made  by  the  Governor  in  Council  under 
the  authority  of  this  Act,  it  shall  not  be  lawful  for  a  dealer  to 
make  or  to  sell,  or  to  bring  into  Canada  any  such  article,  if  to 
such  article  or  any  part  thereof  there  is  applied — 

(a)  A  mark  indicating  otherwise  than  truly  that  the  article 
or  part  thereof  is  made  of  rolled  gold  plate,  gold  filled,  gold 
plate,  silver  plate,  silver  filled,  or  gold  or  silver  electroplate, 
or  any  similar  material ;  or — 

(6)  A  mark  indicating,  otherwise  than  truly  and  correctly, 
the  fineness  and  the  actual  weight  of  gold  or  silver,  con- 
tained in  the  article  or  part  thereof,  or  the  proportion  of 
gold  or  of  silver  to  the  gross  weight  of  the  article  or  of 
such  part,  at  the  time  the  article  is  sold  or  delivered  by  the 
maker ;  or — 

(c)  Unless  where  a  mark  indicating  any  such  particulars 
is  applied  to  such  article,  or  part  thereof,  there  is  also  ap- 
plied to  it  a  trade  mark  registered  in  accordance  with  The 
Trade  Mark  and  Design  Act. 

The  actual  weight  or  the  proportion  of  gold,  or  of  silver,  in 
any  such  article  or  part  thereof,  shall  not  be  less  than  the  actual 
weight  or  proportion  indicated  by  any  such  mark  applied  thereto, 
by  more  than  ten  per  centum  of  the  actual  weight  or  proportion 
so  indicated. 

The  Governor  in  Council  may,  from  time  to  time,  make  such 
regulations  as  to  him  seem  necessary  for  declaring  articles  to 
be  subject  to  or  exempt  from  the  provisions  of  this  section.  (Art. 
13.) 


CAPE  PROVINCE  115 

Electroplated  Ware. 

It  shall  not  be  lawful  for  a  dealer  to  make  or  to  sell,  or  to 
bring1  into  Canada,  any  article  of  silver  or  gold  electroplate  to 
which  is  applied  a  mark  indicating  otherwise  than  truly  and  cor- 
rectly the  metal  on  which  the  plating  is  deposited,  the  metal  of 
which  the  deposit  is  composed,  and  the  grade,  quality,  or  de- 
scription, as  known  to  the  trade,  of  the  plating.  (Art.  14.) 

Marks  on  Plated  Ware. 

The  following  marks  when  applied  to  articles  of  gold  or  silver 
plate  or  electroplate  shall  be  taken  to  mean  respectively  as  fol- 
lows :  R.  P.,  rolled  plate ;  E.  P.,  silver  electroplate ;  G.  F.,  gold 
filled ;  Gilt,  gold  electroplate ;  N.  S.,  nickel  silver ;  G.  S.,  German 
silver ;  B.  M.,  Britannia  metal ;  W.  M.,  white  metal ;  and  the 
Governor  in  Council  may,  from  time  to  time,  designate  other 
marks  for  such  application  and  define  their  signification.  (Art. 
15.) 

Offenses  and  Penalties. 

Every  one  is  guilty  of  an  indictable  offense,  who,  being  a 
dealer  within  the  meaning  of  this  Act, — 

(a)  contravenes  any  provision  of  sections  9,  10,  11,  12,  13, 
or  14  of  this  Act;  or, 

(b)  Makes  use  of  any  printed  or  written  matter,  or  adver- 
tisement, or  applies  any  mark  to  any  article  of  any  kind  re- 
ferred to  in  section  13  or  in  section  14  of  this  Act  or  to  any 
part  of  such  article,  guaranteeing  or  purporting  to  guaran- 
tee by  such  matter,  advertisement  or  mark,  that  the  gold  or 
silver  on  or  in  such  article  or  such  part  thereof  will  wear  or 
last  for  any  specified  time.     (Art.  16.) 

Every  dealer  who  is  convicted  of  an  offense  under  this  Act, 
or  of  an  attempt  to  commit  any  such  offense  shall  be  liable  to  a 
fine  not  exceeding  one  hundred  dollars  for  each  article  or  part 
of  an  article  in  respect  of  which  the  conviction  is  had ;  and  after 
the  conviction  every  such  article  shall  be  so  broken  and  defaced 
as  to  be  unfit  for  sale  otherwise  than  as  metal.  (Art.  17.) 

Marking  Goods :     Trade  mark  Registered. 


CAPE   PROVINCE 

The  coast  is  indented  by  several  bays,  namely,  Table  Bay, 
Flase  Bay,  Mossel  and  Algoa  Bays.  A  considerable  coast  trade 
is  carried  on  with  Hondeklip,  Walfish  and  other  bays  on  the 
west  coast;  and  Mossel  Bay,  Port  Elizabeth,  Port  Alfred,  East 
London  and  Natal  on  the  east  coast. 


n6  CAPE  PROVINCE 

The  total  population  of  the  Cape  of  Good  Hope  in  April, 
1904,  was  2,409,804.  Of  this  579,741  were  of  European  descent 
and  about  1,500,000  aborigines.  The  area  is  276,995  square 
miles. 

COMMERCE — The  principal  industries  consist  in  the  mining  of 
coal,  copper,  gold,  diamonds  etc.,  the  production  of  wine  and 
the  raising  of  cattle,  ostriches  etc.  The  principal  articles  of  ex- 
port are  wool,  angora  hair,  sheep  and  goat  skin,  ostrich  feathers, 
diamonds,  gold,  copper,  etc. 

MONEY,  WEIGHTS  AND  MEASURES — Same  as  Great  Britain. 

Duration. 
Fourteen   years,   renewable  for  similar  periods. 

Requirements. 

Application ;  declaration  legalized  by  British  Consul ;  power 
of  attorney,  legalized  by  British  Consul ;  six  copies  of  mark ;  one 
electrotype. 

W hat  May  Be  Registered. 

Act  12  of  1895  prescribed  that  a  trade  mark  must  henceforth 
consist-  of  or  contain  at  least  one  'of  the  following  essential  par- 
ticulars: (a)  A  name  of  an  individual  or  firm  printed,  im- 
pressed, or  woven  in  some  particular  manner;  or  (b)  a  written 
signature,  or  a  copy  of  a  written  signature,  of  the  individuals  or 
firm  applying  for  registration  thereof  as  a  trade  mark;  or  (c)  a 
distinctive  device,  mark,  or  brand,  heading,  label  or  ticket;  or 
(rf)  an  invented  word  or  invented  words;  (e)  a  word  or  words 
having  no  reference  to  the  character  or  quality  of  the  goods,  and 
not  being  a  geographical  name.  And  there  may  be  added  to 
any  one  or  more  of  these  particulars  any  letters,  words,  or  fig- 
ures, or  of  any  of  them,  but  the  applicant  for  registration  of  any 
such  additional  matter  must  state  in  his  application  the  essential 
particulars  of  his  trade  mark,  and  must  disclaim  in  his  applica- 
tion any  right  to  the  exclusive  use  of  the  added  matter. 

Provided  as  follows : 

(1)  A  person  need  not  under  this  section  disclaim  his  own 
name  or  the  foreign  equivalent  thereof ;  or  his  place  of  business, 
but  no  entry  of  such  name  shall  affect  the  right  of  any  owner 
of  the  same  name  to  use  that  name  or  the  foreign  equivalent 
thereof. 

(2)  Any  special  and  distinctive  word  or  words,  letter,  figure, 
or  combination  of  letters  or  figures  or  of  letters  and  figures  used 
as  a  trade  mark  before  the  eighth  day  of  August,  one  thousand 
eight  hundred  and  seventy-seven,  may  be  registered  as  a  trade 
mark  under  the  said  Act. 


CAPE  PROVINCE  117 

Documents   Required. 

In  order  to  obtain  registration  of  a  trade  mark  an  application 
accompanied  by  a  solemn  declaration,  must  be  filed  with  the 
Registrar  of  Deeds  in  Cape  Town,  and  both  must  be  written  on 
durable  paper  of  foolscap  size,  having  on  the  left  hand  side  a 
margin  of  not  less  than  two  inches. 

Where  the  applicant  is  a  firm  the  application  and  declaration 
must  be  signed  by  a  partner  of  the  firm,  who  should  add  the 
words  "a  member  of  the  firm"  after  his  signature,  and,  in  the 
case  of  a  company,  by  the  Secretary  or  other  Principal  Officer, 
adding,  after  his  signature,  "for  the  Company." 

Care  should  be  taken  that  the  declaration  is  executed  in  terms 
of  the  rule  in  that  behalf  provided,  which  runs  thus : 

The  declaration,  if  made  within  the  Province,  shall  be 
attested  by  a  Justice  of  the  Peace ;  if  made  elsewhere  within 
His  Majesty's  Dominions,  by  a  Justice  of  the  Peace  or 
Mayor;  and  if  made  out  of  His  Majesty's  Dominions,  by  a 
British  Consular  Officer,  or  by  a  Magistrate  or  Mayor 
(whose  signature  shall  be  authenticated  by  such  Consular 
Officer,  or  by  the  Consular  Representative,  in  London,  of  the 
Country  in  which  the  declaration  was  made)  or  by  a  Com- 
missioner of  the  Supreme  Court  of  the  Cape  of  Good  Hope 
appointed  to  administer  oaths  outside  this  Province  or  by 
such  other  officer  as  shall  by  law  be  authorized  to  adminis- 
ter an  oath,  provided  that  the  signatures  of  the  officers  at- 
testing declarations  made  out  of  His  Majesty's  Dominions 
shall  in  every  case  be  authenticated  in  the  manner  prescribed 
above. 

The  application  and  declaration  must  be  signed  by  the  appli- 
cant and  cannot  be  signed  by  an  agent  under  Power  of  Attor- 
ney. 

Every  application  must  be  accompanied  by  six  representations 
of  the  mark. 

Procedure. 

No  mark  will  be  accepted  for  registration  unless  consisting  of 
or  containing  one  of  the  above  essentials. 

No  mark  is  registered  for  what  such  registration  may  be 
worth. 

Special  attention  is  called  to  the  following  points  of  practice 
in  the  Cape  Province  Trade  Mark  Registry  Office  : 

(a)  Where  a  mark  is  sought  to  be  registered  in  respect  of 
several  different  articles  and  the  name  of  one  of  the  articles  only 
appears  upon  the  printed  copy  of  the  mark  attached  to  the  ap- 
plication, the  Registrar  will  only  register  the  mark  in  respect  of 
the  article  so  mentioned  unless  the  application  contains  a  state- 
ment to  the  effect  that  the  name  on  the  mark  will  be  varied  from 


u8  CAPE  PROVINCE 

time  to  time  by  substituting  the  name  of  the  article  to  which  the 
mark  is  actually  to  be  applied. 

(6)  Where  a  word  is  sought  to  be  registered  as  an  invented 
word,  part  of  which  consists  of  a  word  in  common  use,  the  Reg- 
istrar will  not  accept  the  word  even  if  a  disclaimer  is  made  to 
that  portion  of  the  word  in  common  use. 

//  the  application  is  rejected  by  the  Registrar  of  Deeds  by 
reason  of  an  omission  to  comply  ivith  the  rules  or  any  one  of 
them,  the  application  cannot  be  amended  by  the  agent,  an'd  if  the 
application  is  renewed  fresh  papers  must  be  prepared  with  the 
defect  rectified  and  refiled  and  the  application  renewed  ab  initio. 

The  period  required  to  effect  the  registration  of  a  trade  mark 
and  obtain  the  Certificate  is  about  seven  weeks  from  the  date 
of  the  receipt  of  the  papers. 

Where  registration  of  a  trade  mark  has  not  been  or  shall  not 
be  completed  within  three  months  from  the  date  upon  which 
the  application  is  received  by  the  Registrar  of  Deeds,  by  reason 
of  default  on  the  part  of  the  applicant,  the  application  shall  be 
deemed  to  be  abandoned,  but  should  this  happen  the  applicant 
can  always  file  a  fresh  application,  in  which  event  a  second  ap- 
plication fee  will  have  to  be  paid. 

The  Registrar  has  power  to  grant  an  extension  of  time  within 
which  to  complete  an  application. 

The  power  is  only  exercised  when  the  Registrar  is  satisfied 
that  there  is  a  reasonable  excuse  for  not  completing  the  applica- 
tion within  the  time  limit. 

Business  with  the  Deeds  Registry  Office  must  be  conducted  in 
person  or  through  an  agent,  and  not  by  correspondence. 

Assignments. 

The  right  to  the  use  of  a  trade  mark  is  assignable  by  an  in- 
strument in  writing.  No  special  form  is  required.  Special  at- 
tention is  drawn  to  the  fact  that  the  Registrar  requires  proof 
that  the  good  will  of  the  business  has  been,  assigned  together 
with  the  mark. 

The  application  and  declaration  shall  be  signed  and  attested 
as  provided  in  connection  with  applications  for  the  registration 
of  trade  marks ;  and  the  applicant  shall  furnish  such  proof  of 
his  title  to  the  mark  claimed  and  of  the  existence  of  the  good 
will  of  the  business  concerned  in  the  particular  goods  or  classes 
of  goods  for  which  the  mark  has  been  registered,  as  the  Registrar 
of  Deeds  may  require  for  his  satisfaction.  The  claimant  shall 
also  produce  the  original  certificate  of  registration  for  endorse- 
ment of  such  assignment  or  transmission,  and  if  it  has  been  lost 
or  destroyed  a  declaration  setting  forth  fully  the  circumstances 
of  such  loss  or  destruction,  attested  in  the  manner  described 
above,  shall  be  lodged. 


CAPE  PROVINCE  ng 


Renewals. 

Trade  marks  can  be  registered  in  perpetuity  subject  to  the 
payment  of  a  renewal  fee  before  the  expiration  of  every  four- 
teen years. 

The  renewal  fee  will  not  be  accepted  earlier  than  within  three 
months  of  the  expiration  of  each  fourteen  years. 

The  Registrar  may  accept  payment  of  the  renewal  fee  within 
three"  months  after  expiration  of  the  period  of  protection,  with 
the  additional  prescribed  fee  of  ten  shillings,  and  may,  should 
the  mark  be  removed  from  the  Register  for  non-payment  of 
the  renewal  fee,  restore  the  same  on  payment  of  the  prescribed 
additional  fee  if  satisfied  that  it  is  just  so  to  do. 

The  certificate  of  registration  should  be  sent  for  endorsement 
of  payment  of  the  renewal  fee.  When  this  course  is  not  con- 
venient the  fee  may  be  paid  and  the  certificate  subsequently  en- 
dorsed upon  payment  of  a  further  fee  of  three  shillings. 

Appeal. 

An  appeal  against  the  Registrar's  decision  may  be  made  to  the 
Supreme  Court  of  the  Province. 

Classification  of  Goods. 

CLASS  1.  Chemical  substances  used  in  manufactures,  photo- 
graphy, or  philosophical  research,  and  anti-corrosives. 

CLASS  2.  Chemical  substances  used  for  agricultural,  horticul- 
tural, veterinary  and  sanitary  purposes. 

CLASS  3.  Chemical  substances  prepared  for  use  in  medicine 
and  pharmacy. 

CLASS  4.  Raw  or  partly  prepared  vegetable,  animal,  and  min- 
eral substances,  used  in  manufactures,  not  included  in  other 
classes. 

CLASS  5.  Unwrought  and  partly  wrought  metals  used  in  man- 
ufacture. 

CLASS  6.  Machinery  of  all  kinds,  and  parts  of  machinery,  ex- 
cept agricultural  and  horticultural  machines  included  in  Class 
7. 

CLASS  7.  Agricultural  and  horticultural  machinery,  and  parts 
of  such  machinery. 

CLASS  8.  Philosophical  instruments,  scientific  instruments, 
and  apparatus  for  useful  purposes.  Instruments  and  apparatus 
for  teaching. 

CLASS  9.     Musical  instruments. 

CLASS  10.  Horological  instruments. 

CLASS  11.  Instruments,  apparatus,  and  contrivances,  not  med- 


I2O  CAPE  PROVINCE 

icated,  for  surgical  or  curative  purposes,  or  in  relation  to  the 
health  of  men  or  animals. 

CLASS  12.  Cutlery  and  edge  tools. 

CLASS  13.  Metal  goods  not  included  in  other  classes. 

CLASS  14.  Goods  of  precious  metals  (including  aluminum, 
nickel,  Britannia  metal,  etc.),  and  jewelry  and  imitations  of  such 
goods  and  jewelry. 

CLASS  15.  Glass. 

CLASS  16.     Porcelain  and  earthenware. 

-   CLASS  17.  Manufactures   from  mineral  and  other  substances 
for  building  or  decoration. 

CLASS  18.  Engineering,  architectural,  and  building  contriv- 
ances. 

CLASS  19.  Arms,  ammunition,  and  stores  not  included  in  Class 
20. 

CLASS  20.  Explosive  substances. 

CLASS  21.  Naval  architectural  contrivances  and  naval  equip- 
ments not  included  in  Classes  19  and  20. 

CLASS  22.  Carriages. 

CLASS  23.  Cotton  yarn  and  thread. 

CLASS  24.  Cotton  piece  goods  of  all  kinds. 

CLASS  25.  Cotton  goods  not  included  in  Classes  23,  24  or  38. 

CLASS  26.  Linen  and  hemp  yarn  and  thread. 

CLASS  27.  Linen  and  hemp  piece  goods. 

CLASS  28.  Linen  and  hemp  goods  not  included  in  Classes  26, 
27  or  50. 

CLASS  29.  Jute  yarns  and  tissues,  and  other  articles  made  of 
jute  not  included  in  Class  50. 

CLASS  30.  Silk,  spun,  thrown,  or  sewing. 

CLASS  31.  Silk  piece  goods. 

CLASS  32.  Other  silk  goods  not  included  in  Classes  30  and  3i. 

CLASS  33.  Yarns  of  wool,  worsted,  or  hair. 

CLASS  34.  Cloths  and  stuffs  of  wool,  worsted  or  hair. 

CLASS  35.  Woolen  and  worsted  and  hair  goods  not  included 
in  Classes  33  and  34. 

CLASS  36.  Carpets,  floorcloth  and  oilcloth. 

CLASS  37.  Leather,  skins  umvrought  and  wrought,  and  articles 
made  of  leather  not  included  in  other  classes. 

CLASS  38.  Articles  of  clothing. 

CLASS  39.  Paper  (except  paperhangings),  stationery  and  book- 
binding. 

CLASS  40.  Goods  manufactured  from  india  rubber  and  gutta 
percha  not  included  in  other  classes. 

CLASS  41.  Furniture  and  upholstery. 

CLASS  42.  Substances  used  as  food,  or  as  ingredients  in  food. 

CLASS  43.  Fermented  liquors  and  spirits. 

CLASS  44.  Minerals  and  aerated  waters,  natural  and  artificial, 
including  ginger  beer. 


CENTRAL  AFRICA  PROTECTORATE  121 

.  CLASS  45.  Tobacco,  whether  manufactured  or  unmanufac- 
tured. 

CLASS  46.  Seeds  for  agricultural  and  horticultural  purposes. 

CLASS  47.  Candles,  common  soap,  detergents ;  illuminating, 
heating,  or  lubricating  oils ;  matches,  and  starch,  blue,  and  other 
preparations  for  laundry  purposes. 

CLASS  48.  Perfumery  (including  toilet  articles,  preparations 
for  the  teeth  and  hair,  and  perfumed  soap). 

CLASS  49.  Games  of  all  kinds  and  sporting  articles,  not  in- 
cluded in  other  classes. 

CLASS  50.  Miscellaneous,  including: 

(1)  Goods  manufactured  from  ivory,  bone,  or  wood,  not 
included  in  other  classes. 

(2)  Goods  manufactured  from  straw  or  grass,  not  included 
in  other  classes. 

(3)  Goods  manufactured  from  animal  and  vegetable  sub- 
stances, not  included  in  other  classes. 

(4)  Tobacco  pipes. 

(5)  Umbrellas,  walking  sticks,  brushes  and  combs. 

(6)  Furniture  cream,  plate  powder. 

(7)  Tarpaulins,  tents^  rick  cloths,  rope,  twine. 

(8)  Buttons  of  all  kinds,  other  than  of  precious  metal  or 
imitations  thereof. 

(9)  Packing  and  hose  of  all  kinds.     Goods  not  included  in 
the  foregoing  class. 


CENTRAL  AFRICA  PROTECTORATE 

The  Protectorate  of  Nyasaland  lies  along  the  southern  and 
western  shores  of  Lake  Nyasa  and  extends  towards  the  Zambesi. 
The  area  is  43,608  square  miles,  and  it  is  divided  into  thirteen 
administrative  districts.  The  population  in  1909  was  estimated 
to  be  922,313  natives,  435  Asiatics  and  587  Europeans. 

British  Central  Africa  is  divided  into  the  Nyasaland  Protec- 
torate and  the  British  Sphere  of  Influence  beyond.  The  first- 
named  is  administered  by  a  Governor  and  Commander-in-Chief, 
under  the  Imperial  Government  (Colonial  Office),  the  last-named 
by  the  British  South  Africa  Chartered  Company. 

The  chief  products  are  cotton,  coffee,  tobacco,  tea,  chillies  and 
rubber,  which  are  largely  exported ;  rice  and  other  subtropical 
products  are  also  grown. 

MONEY,  WEIGHTS  AND  MEASURES — Same  as  Great  Britain. 

Registration.     Substantive  and  Adjective  Law. 

1.  This  ordinance  may  be  cited  as  "The  Patents,  Designs,  and 
Trade  Marks  Ordinance,  1903. 


122  CEYLON 

2.  The  Registrar  of  the  British  Central  Africa  Protectorate 
shall  be  Registrar  of  Patents,  Designs,  and  Trade  Marks  within 
the  Protectorate,  and  shall  for  that  purpose  have  all  the  powers 
and  authority  of  the  Comptroller-General  of  Patents  in  England 
under  the  Patents,  Designs,  and  Trade  Marks  Act,  1883  to  1901, 
or  under  any  statutes  substituted  for  the  said  statutes. 

(a)  Subject  to  the  other  provisions  of  this  Ordinance,  the 
procedure  in  obtaining  or  opposing  or  extending  the  period  of  or 
amending  or  revoking  the  grant  of  a  patent  and  in  registering  or 
opposing  or  amending  the  registration  of  a  design  or  a  trade  mark 
shall  be  that  in  force  in  England  under  the  Patents,  Designs,  and 
Trade  Marks  Acts,  1883  to  1901,  or  under  any  statute  amending 
or  substituted  for  the  said  statutes. 

(b)  The  definition  of  and  the  law  relating  to  the  subject-mat- 
ter of  patents,  designs,  and  trade  marks  and  the  definition  of 
and  the    law   relating  to   'true  and    first   inventors,'   patentees, 
grantees,  assignees,  and  licencees  shall  be  those  in  force  in  Eng- 
land as  aforesaid. 

(c)  The  legal   remedies  of  any  person   claiming  an  interest 
in  any  patent,  design,  or  trade  mark  shall  be  those  in  force  in 
England  as  aforesaid,  except  that  in  the  aforesaid  statutes,  'The 
Court'  shall  mean  His  Majesty's  High  Court  of  British  Central 
Africa ;  the  'Comptroller'   shall   mean  the  Registrar  of  British 
Central  Africa   Protectorate ;  the  'Board  of  Trade'  shall  mean 
the  Commissioner;  'Law  Officer'  shall  mean  the  Crown  Prosecu- 
tor. 


CEYLON 

Ceylon  is  an  island,  situated  south-east  of  the  peninsula  of 
India,  between  latitudes  5°  59'  and  9°  51'  north,  and  longitudes 
79°  41'  and  81°  54'  east.  Area  25,332  square  miles,  or  16,- 
000,000  acres.  Its  greatest  length  is  from  north  to  south,  266 
miles,  and  greatest  width  from  east  to  west,  140  miles.  The 
population  in  December,  1911,  was  estimated  to  be  4,210,549. 

COMMERCE — The  exports  consist  principally  of  tea,  also  rub- 
ber, cocoa  (from  cacao  or  chocolate  tree),  cinnamon,  copperah  or 
dried  coconut  pulp,  desiccated  coconut,  coconut  oil,  coir,  arrack, 
coffee,  cinchona  bark,  cardamoms,  tobacco,  citronella  and  other 
essential  oils,  hides,  horns,  ebony  and  other  fine  timbers.  The 
imports  consist  principally  of  apparel  and  haberdashery,  coal, 
cotton  and  woolen  goods,  machinery,  malt  liquor,  metals,  spirits, 
stationery  etc. 

MONEY — Ceylon  1  rupee  (100  cents. )=32  cents. 

WEIGHTS  AND  MEASURES — Same  as  Great  Britain. 


CEYLON  123 

Laws. 

Merchandise  Marks  Ordinance  of  1888.  Trade  Mark  Ordin- 
ance of  1888.  Amended  Ordinance  No.  4  of  1890;  No.  6  of 
1904  and  No.  9  of  1906. 

Term. 

Fourteen  years ;  renewable. 

Application  for  Registration. 

An  application  for  registration  of  a  trade  mark,  if  made  by  any 
firm  or  partnership,  may  be  signed  by  some  one  or  more  mem- 
bers of  such  firm  or  partnership,  as  the  case  may  be. 

If  the  application  be  made  by  a  body  corporate,  it  may  be 
signed  by  the  secretary  or  other  principal  officer  of  such  body 
corporate.  (Art.  6.) 

Mode  of  Application. 

Any  person  who  has  registered  a  trade  mark  in  Great  Britain 
shall  be  entitled  to  registration  of  his  trade  mark  under  this 
Ordinance  in  priority  to  other  applicants ;  and  such  registration 
shall  have  the  same  date  as  the  date  of  the  application  for  regis- 
tration in  Great  Britain ; 

Provided  that  his  application  is  made  within  four  months  from 
his  applying  for  protection  in  Great  Britain ; 

Provided  that  nothing  in  this  section  contained  shall  entitle 
the  proprietor  of  the  trade  mark  to  recover  damages  for  infringe- 
ments happening  prior  to  the  date  of  the  actual  registration  of 
his  trade  mark  in  this  colony ; 

The  use  in  this  colony  during  the  period  aforesaid  of  the 
trade  mark  shall  not  invalidate  the  registration  of  the  trade  mark ; 

The  application  for  the  registration  of  a  trade  mark  under 
this  section  must  be  made  in  the  same  manner  as  an  ordinary  ap- 
plication under  this  Ordinance; 

Provided  that  any  trade  mark,  the  registration  of  which  has 
been  duly  applied  for  in  Great  Britain  may  be  registered  under 
this  Ordinance.  (Art.  41.) 

An  application  for  registration  and  all  other  communications 
between  the  applicant  and  the  Registrar-General  may  be  made  by 
or  through  an  agent  duly  authorized  to  the  satisfaction  of  the 
Registrar-General. 

On  receipt  of  the  application  the  Registrar-General  shall  fur- 
nish the  applicant  with  an  acknowledgment  thereof. 

When  application  is  made  to  register  a  trade  mark  which  was 
used  by  the  applicant  or  his  predecessors  in  business  before  the 
coming  into  operation  of  said  Ordinance,  the  application  shall 
contain  a  statement  of  the  time  during  which,  and  of  the  per- 


124  CEYLON 

sons  by  whom,  it  has  been  so  used  in  respect  of  the  goods  men- 
tioned in  the  application. 

Subject  to  any  other  directions  that  may  be  given  by  the  Reg- 
istrar-General, all  applications,  notices,  counterstatements,  rep- 
resentations of  marks,  papers  having  representations  affixed,  or 
other  documents  required  by  the  said  Ordinance  or  by  these 
rules  to  be  left  with  or  sent  to  the  Registrar-General  shall  be 
upon  foolscap  paper  of  a  size  of  13  inches  by  8  inches,  and 
shall  have  on  the  left-hand  part  thereof  a  margin  of  not  less 
than  one  inch  and  a  half. 

Where  a  drawing  or  other  representation  or  specimen  cannot 
be  given  in  manner  aforesaid,  a  specimen  or  copy  of  the  trade 
mark  may  be  sent  either  of  full  size  or  on  a  reduced  scale,  and 
in  such  form  as  the  Registrar-General  may  think  most  con- 
venient. The  Registrar-General  may,  if  dissatisfied  with  the 
representation  of  a  trade  mark,  require  a  fresh  representation, 
either  before  he  proceeds  with  the  application  or  before  he 
registers  the  trade  mark.  The  Registrar-General  may  also,  in 
exceptional  cases,  deposit  in  the  Registrar-General's  office  a  speci- 
men or  copy  of  any  trade  mark  which  cannot  conveniently  be 
shown  by  a  representation,  and  may  refer  thereto  in  the  reg- 
ister in  such  manner  as  he  may  think  fit. 

When  an  application  relates  to  a  series  of  trade  marks  dif- 
fering from  one  another  in  -respect  of  the  particulars  mentioned 
in  section  7  of  the  said  Ordinance,  a  representation  of  each  trade 
mark  of  the  series  shall  be  made  or  affixed  upon  the  form  of  ap- 
plication, and  also  upon  each  of  the  separate  half  sheets  of  paper 
aforesaid. 

Advertisements. 

Every  application  shall  be  advertised  by  the  Colonial  Secretary 
in  the  Government  Gazette  and  in  one  or  more  of  the  local  news- 
papers, during  such  time  and  in  such  manner  as  the  Colonial 
Secretary  may  direct. 

Before  advertising  in  the  Government  Gazette  and  in  one  or 
more  of  the  local  newspapers,  the  Colonial  Secretary  may  re- 
quire the  applicant  to  pay  the  costs  of  advertising  in  such  local 
newspaper  or  newspapers  as  the  Colonial  Secretary  may  elect. 

Opposition  to  Registration. 

The  notice  required  by  Sec.  11  of  the  said  Ordinance  to  be 
given  to  the  Registrar-General  shall  be  given  by  delivering  at 
or  sending  to  the  Registrar-General's  office  a  copy  of  the  ap- 
plication or  other  initiatory  proceeding,  bearing  an  endorsement 
by  the  applicant  or  his  proctor  that  notice  of  the  application  or 
other  initiatory  proceeding  has  been  served  on  the  opponent. 

As  soon  as  may  be  after  the  expiration  of  two  months  from 


CEYLON  125 

the  date  of  the  first  advertisement  of  the  application,  the  Regis- 
trar-General shall,  subject  to  any  application  or  other  proceed- 
ings under  Section  11  of  the  said  Ordinance  and  the  determina- 
tion of  the  court  thereon,  if  he  is  satisfied  that  the  applicant  is 
entitled  to  registration,  and  on  payment  of  the  prescribed  fee, 
enter  the  name,  address,  and  description  of  the  applicant  in  the 
Register  of  Trade  Marks  as  the  registered  proprietor  of  the 
trade  mark  in  respect  of  the  particular  goods  or  classes  of  goods 
described  in  his  application. 

Fees. 

On  application,  Rs.  8.50 ;  on  completion,  Rs.  10.  -  For  each 
additional  class,  Rs.  2.50.  Renewal  fees  Rs.  10. 

Assignment. 

A  trade  mark  when  registered  shall  be  assigned  and  trans- 
mitted only  in  connection  with  the  good-will  of  the  business  con- 
cerned in  the  particular  goods  or  classes  of  goods  for  which 
it  has  been  registered,  and  shall  be  determinable  with  that  good- 
will. (Art.  12.) 

Offenses. 

If  any  person  makes  or  causes  to  be  made  a  false  entry  in  the 
register  kept  under  this  Ordinance,  or  a  writing  falsely  purport- 
ing to  be  a  copy  of  an  entry  in  any  such  register,  or  produces, 
or  tenders,  or  causes  to  be  produced  or  tendered  in  evidence  any 
such  writing  knowing  the  entry  or  writing  to  be  false,  he  shall 
be  guilty  of  an  offense,  and  punished  with  simple  or  rigorous 
imprisonment  for  a  term  not  exceeding  seven  years. 

Any  person  who  describes  any  trade  mark  applied  to  any  ar- 
ticle sold  by  him  as  registered,  which  is  not  so,  shall  be  guilty  of 
an  offense,  and  liable  on  conviction  to  a  fine  not  exceeding  fifty 
rupees.  A  person  shall  be  deemed,  for  the  purposes  of  this  sec- 
tion, to  describe  that  a  trade  mark  is  registered,  if  he  sells  the 
article  with  the  word  "registered"  ,or  any  word  or  words  ex- 
pressing or  implying  that  registration  has  been  obtained  for  the 
article  stamped,  engraved,  or  impressed  on,  or  otherwise  applied 
to,  the  article. 

Any  person  who,  without  the  authority  of  Her  Majesty,  or 
any  of  the  Royal  Family,  or  of  any  Government  Department, 
assumes  or  uses  in  connection  with  any  trade,  business,  calling 
or  profession  the  Royal  Arms  or  arms  so  nearly  resembling  the 
same  as  to  be  calculated  to  deceive,  in  such  a  manner  as  to  be 
calculated  to  lead  other  persons  to  believe  that  he  is  carrying  on 
his  trade,  business,  calling,  or  profession  by  or  under  such  au- 
thority as  aforesaid,  shall  be  guilty  of  an  offense,  and  liable 
on  conviction  to  a  fine  not  exceeding  one  hundred  rupees.  (Art, 
42.) 


126  CHANNEL  ISLANDS — CHILE 

All  offenses  under  this  Ordinance  are  hereby  declared  to  be 
"non-cognizable"  and  "bailable,"  within  the  meaning  of  those 
terms  as  defined  in  section  3  of  "The  Criminal  Procedure  Code, 
1883."  (Art.  43.) 

Classification. 

There  are  fifty  classes ;  same  as  British. 


CHANNEL  ISLANDS 

The  islands  of  Jersey  (which  is  the  largest  and  most  impor- 
tant) and  Guernsey  and  Alderney  are  termed  by  the  Customs 
the  Channel  Islands,  having  a  separate  jurisdiction  and  freedom 
from  Customs  dues.  The  population  of  these  islands  is  about 
98,000. 

The  imports  are  coals  and  all  articles  of  food  from  England 
and  France.  The  principal  articles  of  export  are  market  garden 
and  farm  produce,  principal  among  these  being  potatoes ;  grapes 
are  also  extensively  grown  and  exported.  The  islands  are  also 
celebrated  for  their  well  known  breed  of  cattle,  which  are  largely 
exported.  About  300,000  tons  of  broken  stones  are  exported 
annually,  principally  to  London. 


CHANNEL  ISLANDS 

(Jersey  and  Guernsey.) 

Trade  marks  may  be. protected  in  Jersey  and  Guernsey  by 
entering  a  certificate  of  registration  in  Great  Britain  in  the  rolls 
of  the  royal  courts. 


CHILE 

The  Republic  of  Chile  is  the  most  southerly  state  on  the  west 
side  of  the  continent  of  South  America,  extending  2,600  miles 
on  the  Pacific  coast  south  of  Peru  to  Cape  Horn,  having  a 
breadth  of  40  to  200  miles.  The  mineral  resources  of  the  coun- 
try are  extensive ;  gold,  silver,  copper  and  coal  are  mined  to  a 
large  extent ;  there  exist  nitrate  of  soda,  mercury,  iron,  zinc, 
nickel,  antimony,  arsenic,  manganese,  sulphur  and  borate  of  lime, 
cobalt,  etc. ;  the  deposits  of  copper  are  said  to  be  inexhaustible. 
The  area  is  about  293,000  square  miles ;  and  the  population  in 
1911  was  estimated  to  be  3,602,204.  The  capital  is  Santiago. 


CHILE  127 

MONEY,  WEIGHTS  AND  MEASURES — The  condoi  =  30  peso;  ihe 
•doblon=10  peso;  the  escudo=5  peso.  The  monetary  unit  is  the 
gold  peso,  exchange  value  Is.  7d.  (about)  =38  cents  U.  S. 

The  metric  system  is  used. 

Laws. 
Law  of  November  12,  1874  and  August  12,  1905. 

Term. 

The  registration  of  all  trade  or  commercial  marks  shall  be  re- 
newed every  ten  years.  Failure  to  renew  them  shall  entail  the 
extinction  of  the  privilege.  (Art.  7.) 

Kind  of  Trade  Marks. 

The  name  of  trade  mark  shall  be  given  to  any  mark  affixed  to 
articles  manufactured  in  Chile  or  in  any  foreign  country  by 
manufacturers  or  agriculturists.  The  name  of  commercial  mark 
shall  be  given  to  those  which  a  merchant  adopts  to  distinguish 
the  articles  sold  by  him.  (Art.  2.) 

Proper  names,  emblems,  and  any  other  sign  adopted  by  the 
manufacturer  or  merchant  to  distinguish  the  objects  of  his  trade 
from  all  others  shall  be  considered  trade  marks.  Nevertheless, 
and  in  order  to  secure  the  proper  legal  effects,  the  initials  "M. 
de  F."  (marca  de  fabrica,  or  trade  mark)  shall  be  added  to  the 
trade  mark.  The  initials  "M.  C."  (marca  commercial  or  com- 
mercial mark)  shall  be  added  to  the  commercial  mark.  (Art.  3.) 

Requirements. 

Power  of  attorney  legalized  by  Chilian  Consul ;  seven  copies 
of  the  mark. 

Publication. 

During  the  month  of  August  of  every  year  a  list  of  the  marks 
registered  up  to  that  time  shall  be  published.  (Art.  13.) 

Infringements. 

Articles  bearing  counterfeit  marks  shall  be  confiscated  to  the 
benefit  of  the  legitimate  owner.  The  instruments  for  the  coun- 
terfeiting shall  be  destroyed.  (Art.  12.) 

He  who  falsifies,  adulterates,  or  fraudulently  uses  the  marks  or 
designs  to  which  the  present  law  refers,  shall  suffer  the  penalty 
provided  for  by  the  Criminal  Code.  (Art.  2.) 

With  reference  to  the  above  article  I  publish  a  letter  which  the 


128  CHILE 

Directive  Council  sent  to  the  Minister  of  Industry  and  Public 
Works : 

SANTIAGO,  CHILE,  March  15,  '12. 

Dear  Sir: — With  all  due  respect  1  take  the  liberty 
to  inform  you  of  the  contents  of  a  letter  from  the  Minister  of 
Great  Britain,  which  refers  to  the  fact  that  the  Marks  of  Com- 
merce registered  in  Chile  can  be  imitated  with  impunity,  because 
the  Law  does  not  grant  to  the  aggrieved  parties  any  compensa- 
tion for  the  injuries  suffered  by  them  in  their  business.  This 
note  of  the  Minister  is  accompanied  by  two  facsimiles  of  the 
Marks  of  Messrs.  Buchanan  &  Co.  and  W.  &  A.  Gilbey  and  of 
their  imitations  made  in  this  country.  The  Minister  adds  that 
his  Government  confidently  hopes  that  a  bill  now  pending  before 
the  National  Congress  for  consideration,  intending  to  modify  the 
present  state  of  affairs,  will  be  approved. 

I  must  tell  you  in  reply,  that  this  society  is,  as  you  well  know, 
empowered  by  the  law  of  1874  to  keep  the  register  of  Commer- 
cial Marks,  and  that  in  order  to  comply  with  this  order  in  the 
most  scrupulous  manner  the  same  does  not  register  any  Marks 
that  have  even  a  remote  similarity  to  previously  registered 
Marks. 

If,  then,  in  commerce,  imitations  and  falsifications  are  made, 
the  interested  parties  have  the  right  to  prosecute  the  infractors 
of  the  Law  in  accordance  with  the  jurisdiction  given  to  them  by 
the  present  Article  2  which  says: 

Article  II.  He  who  falsifies,  adulterates  or  fraudulently 
uses  the  marks  or  designs  to  which  the  present  law  refers, 
shall  suffer  the  penalty  provided  for  by  the  Criminal  Code. 

The  imitations  or  rather  adulterations,  contained  in  the  labels 
which  accompany  the  letter  of  the  Minister,  fall,  in  the  opinion 
of  this  society,  fully  under  the  provisions  of  the  cited  Article. 

With  respect  to  the  project  to  which  the  Minister  refers,  I 
beg  to  state,  that  the "  same  is  at  present  under  consideration 
by  the  Senatorial  Chamber.  The  society  is  of  the  same  opinion 
as  Senator  Reverior,  who  is  its  author,  to  study  the  same  jointly, 
before  it  is  discussed,  and  to  take  interest  in  having  it  promptly 
dispatched  by  the  National  Congress. 

God  be  with  you. 

(Signed)  R.  LARRAIN  C,  President. 

(Signed)  GUZMAN  G.,  Secretary. 
To  the  Minister  of  Industry  and  Public  Works. 

Laws  in  Force  to  Prevent   the  Sale  or  Importation  of  Goods 
Bearing  a  False  Indication  of  Origin. 

No  special  legalization  exists  to  prevent  the  importation  of 
goods  bearing  a  false  indication  of  origin,  but  under  the  Customs 
Regulations,  a  declaration  of  origin  must  be  made  for  statistical 


CHILE  129 

purposes.  It  is  open  to  traders  who  have  registered  a  trade-mark 
in  Chile  and  who  consider  their  business  is  being  injured  by  the 
sate  of  goods  bearing  false  marking  or  description  to  bring  an 
action  against  persons  infringing  their  rights,  but  the  time  and 
expense  involved  generally  deter  foreign  traders  from  prose- 
cuting. 

Marking  Goods. 

The  Trade  Marks  Law  of  Chili  requires  that  trade  marks 
be,  after  registration,  marked  with  the  words  "Marca  de 
Fabrica"  or  "Marca  Comercial"  as  the  case  may  be. 
This  is  seldom  done  in  Chili,  and  there  are  judicial  decisions 
which  seem  to  hold  that  compliance  with  this  provision  of  the 
law  is  not  necessary  in  order  to  obtain  the  benefits  of  registration. 
It  is  best,  however,  to  comply  with  the  conditions  of  the  statute, 
with  a  view  to  safety  in  this  country. 

Trade  Names. 

In  Chili,  proper  names  are  registrable  as  trade  marks  (law  of 
1874,  Art.  3.),  and  there  being  no  provision  in  the  present  law 
affecting  trade-names  other  than  this,  it  may  be  assumed  that 
in  order  to  procure  the  exclusive  right  to  the  use  of  a  proper 
name  in  that  country  under  the  law  as  at  present  constituted, 
registration  of  the  name  must  be  made  as  a  trade-mark. 

The  Registration  of  Marks  for  Medicines. 

The  National  Society  of  Agriculture,  which  under  the  Chilian 
law  is  charged  with  the  registration  of  trade-marks,  has  fixed 
the  following  provisions  for  the  registration  of  marks  applica- 
ble to  medicinal  or  chemical  products  or  patent  medicines.  For 
the  registration  of  such  marks,  it  is  required  that  the  labels 
shall  show  the  name  of  the  manufacturer,  and' if  the  interested 
party  claims  an  exclusive  right  to  the  name,  it  must  show  that 
he  has  a  patent  for  the  manufacture  thereof  in  Chili,  or  that 
he  employs  a  name  unknown  in  commerce  before  the  date  when 
the  registration  is  sought.  For  the  purpose  of  this  proof,  it 
is  required  to  disclose  the  essential  elements  or  formulas  of 
the  remedies  or  products,  for  the  purpose  of  showing  that  a 
new  designation  has  been  adopted.  This  requirement  as  to 
the  novelty  of  the  name  we  presume  to  refer  to  fanciful  as  con- 
trasted with  the  pharmaceutical  names  of  drugs  or  preparations. 
(La  Propriete  Industrielle,  1912,  p.  5.) 

Name  of  Patented  Article. 

A  decree  was  issued  to  the  effect  that  when  a  special  name  is 
given  to  an  article  for  which  a  patent  is  sought,  it  should  be 
registered  as  a  trade-mark  before  the  grant  of  the  patent  if 
the  party  interested  wishes  to  enjoy  the  exclusive  property  in 
said  name.  (Decree  of  June  14,  1909.) 


130  CHINA 


CHINA 

The  Republic  of  China  proper  is  estimated  to  comprise  an 
area  of  1,532,420  English  square  miles  and  to  contain  a  popu- 
lation of  about  500,000,000.  The  principal  independencies  of 
China  are  Mongolia,  with  an  area  of  1,367,600  square  miles,  and 
a  population  of  about  2,605,000 ;  Manchuria  with  an  area  of  364,- 
000  square  miles  and  an  estimated  population  of  16,055,000. 
Thibet  has  an  area  of  463,200  square  miles  and  a  population  of 
about  6,004,000. 

COMMERCE — The  great  bulk  of  the  trade  of  China  is  carried 
on  with  Great  Britain  and  the  colonies.  What  are  known  as 
the  treaty  ports  are  those  with  which  trade  is  carried  on  by  vir- 
tue of  treaties  made  with  China;  the  principal  are  as  follows: 
Amoy,  Canton,  Changsha,  Chefoo,  Chungking,  Chinklang, 
Foochow,  Hangchow,  Hankow,  Ichang,  Kiukiang,  Kiungchow, 
Newchwang,  Nanking,  Ningpo,  Pakhoi,  Samshui,  Shanghai, 
Shashih,  Soochow,  Swatow,  Tientsin,  Wuhu,  Wenchow,  Wu- 
chow. 

The  principal  imports  are  cotton  and  woolen  goods,  raw  cotton, 
opium,  petroleum,  sugar,  rice,  coal,  metals,  machinery,  fish, 
matches,  dyes,  etc.,  and  the  principal  exports  are  silk,  tea,  raw 
cotton,  straw  braid,  beans,  hides  and  skins,  mats  and  mattings,  etc. 

MONEY — I  tael=10  mace;  1  mace=10  candareen;  1  can- 
dareen=10  cash;  1,000  cash=6s.  8d  (nominal  value)  =$1.60 
U.  S.  The  value  of  a  tael  varies  at  different  ports  in  China 
from  5s.  9d.  to  6s.  8d.  The  Haikwan  tael  may  be  reckoned  as 
usually  about  2s.  7d.  (Exchange  value)  =62  cts.  U.  S. 

WEIGHTS  AND  MEASURES — The  weight  of  a  picul  of  100  cat- 
ties is  held  to  equal  133  1-3  Ibs.  avoirdupois,  and  the  length  of 
a  chang  of  10  Chinese  feet  to  be  equal  to  141  English  inches. 
One  Chinese  chih  is  held  to  be  equal  to  14T^  inches  English ;  and 
4  yards  English,  less  3  inches,  to  equal  1  chang. 

Law. 
Law  of  October  23,  1904. 

REGULATIONS     FOR     THE    REGISTRATION     OF    TRADE     MARKS     TO     BE 
OPERATED  EXPERIMENTALLY. 

1.  Any  one,  no  matter  whether  Chinese  or  foreigner,  who 
desires  to  have  the  exclusive  use  of  a  trade-mark,  must  first 
register  the  same  according  to  these  regulations. 

A  distinctive  design,  inscription,  and  emblem,  either  all  three 
employed  in  combination,  or  any  one  or  two  of  them,  constitute 
the  essential  characteristics  of  a  trade  mark. 


CHINA  131 

2.  The  Board  of  Commerce  will  establish  a  Bureau  of  Regis- 
tration to  attend  especially  to  matters  of  registration,  and  the 
Customs  at  Tientsin  and  Shanghai  will  serve  as  branch  offices 
for  receiving  applications,  to  the  greater  convenience  of  those 
who  apply,  who  may  present  their  petitions  at  the  place  nearest 
to  them. 

3.  Applicants  for  registration  may  either  send  their  applica- 
tions  direct   to  the   Bureau   of   Registration   or    fonvard  them 
through  a  branch  office  of  application. 

4.  Every  application  must  be  accompanied  by  a  description 
in  which  there  shall  be  inclosed  three  impressions  of  the  trade- 
mark.    The  description  shall  clearly  and  correctly  explain,  in  a 
general  way,  the  pattern  of  the  trade-mark  and  tell  on  what 
sort  of  goods  it  is  to  be  used,  and  to  what  class  they  belong 
according  to  the  classification  appended  to  the  subordinate  rules 
annexed  to  these  experimental  regulations.     If  the  application 
be  forwarded  through  a  branch  office  of  application,  duplicates 
must  be  made  both  of  the  application  and  the  description. 

5.  The  Bureau  of  Registration,  having  received  an  applica- 
tion, and  having  found  nothing  in  it  contrary  to  the  require- 
ments,  shall  file  the  same  for  six  months,  and  if  within  that 
time   no  person   shall   have  petitioned  against  the  registration, 
the  said  trade-mark  shall  be  registered. 

6.  If  applications  be  made  for  the  registration  of  trade-marks 
which  are  similar  to  one  another  and  which  are  to  be  used  upon 
the   same  sort  of  goods,   registration   must  be  granted  to   the 
one    first    making   application.      If   the    several    applications    be 
presented   at   the   same  time   on   the  same   day,   permission  to 
register  must  be  given  to  all. 

7.  In  case  of  a  trade-mark  already  registered  in  a   foreign 
country,   if  application   for  its   registration   in  China  be  made 
within  four  months   from  the  date  of  its  registration  abroad, 
the  date  of  such  registration  abroad  may  be  recognized. 

8.  Trade-marks  of  the  character  specified  below  shall  be  re- 
fused registration : 

(I.)  Those  which  destroy  respect  for  rank,  do  injury  to  the 
customs  of  the  country,  and  (are  likely  to)  deceive  the  people.* 

(II.)  Those  which  imitate  the  impressions  of  seals  especially 
reserved  for  the  use  of  the  government  (such  as  the  Imperial 
seal  and  the  oblong  lead  seals  of  the  various  yamens),  or  which 
imitate  the  designs  of  the  Imperial  flag,  the  military  banners, 
or  decorations  conferred  for  merit. 

(III.)  A  trade-mark  identical  with  one  already  registered  be- 
longing to  another  person,  or,  identical  with  one  in  public  use 
in  China  more  than  two  years  before  the  present  application 

*For  instance  such  as  use  official  emblems,  or  employ  pictures  which  Chinese 
may  regard  as  improper. 


132  CHINA 

shall  have  been  made,  or  trade-marks  similar  to  either  of  the 
above  if  used  upon  the  same  sort  of  goods. 

(IV.)  Those  which  cannot  be  recognized  by  some  distinctive 
feature. 

9.  The   term    during  which    any   merchant,    Chinese   or    for- 
eigner, may  be  allowed  exclusive  use  of  a  trade-mark  shall  be 
twenty  years  beginning  with  the   date  of   registration  by   the 
bureau.     But  trade-marks  already  registered  in  another  country 
and    for   whose   registration   here   application    shall    have   been 
made  according  to  the  regulations  shall  be  allowed  a  term  of 
exclusive  use  corresponding  to  that  provided  for  in  the  regis- 
tration abroad.     (But  in  no  case  shall  such  term  extend  beyond 
twenty  years.) 

10.  If  after  the  expiration   of  the   term  of  exclusive  use  it 
should  be  desired  to  extend  such  term,  and  application  for  a 
renewal  of  registration  be  made  within  six  months  before  the 
expiration   of  the  term  of  exclusive  use,  such   application   for 
renewal  may  be  allowed. 

11.  Should  the  owner  of  a  trade-mark  already  registered  de- 
sire to  sell  to  some  one  else  the  right  to  its  exclusive  use,  or 
should  he  find  it  necessary  to  share  its  exclusive  use  with  others, 
he  must  at  once  make  application  at  the  Bureau  of  Registration 
for  registration  of  the  change. 

12.  If  any  trade-mark  already   registered   shall   be   found   to 
violate  the  provisions  of    (I),    (II),  and    (IV)   of  Regulation 
8,  the  Bureau  of  Registration  may  cancel  the  registration  of 
such  trade  mark.. 

13.  If  a  trade-mark  already  registered  shall  be  found  to  vio- 
late the  provisions  of  Regulation  6,  or  those  of  (III)  of  Regu- 
lation 8,  the  injured  party  may  make  application  to  have  the 
registration   of  such  trade-mark  annulled.     But  this   provision 
shall  not  apply  to  any  trade-mark  already  registered  for  three 
years. 

14.  If,  upon  application  having  been  made  for  the  registra- 
tion of  a  trade-mark,  the  Bureau  of  Registration  shall  find  that 
such  trade-mark   does  not  comply   with   the  requirements,   the 
Bureau  shall  indorse  clearly  upon  the  rejected  application  the 
reasons  for  refusing  registration. 

15.  Any  person  unwilling  to  submit  to  the  refusal  mentioned 
in   the  preceding  regulation  may  within   six  months  after  the 
date  of  the  said  refusal  present  a  statement  of  facts  and  request 
the  Bureau  of  Registration  to  reconsider  the  application. 

16.  If  in  any  application  for  the  registration  of  a  trade-mark 
the  owner  of  the  trade-mark  shall  not  be  in  China,  or  if  he 
should  reside   at   a  considerable  distance  from   the   Bureau   of 
Registration,  he  must  select  a  reliable  friend  and  report  him  as 
his  agent  or  representative. 

17.  Should  any  one  desire  to  make  a  copy  of  any  records  in 


CHINA  133 

the  trade-mark  registration  files,  or  examine  the  same,  he  may 
make  application  for  such  privilege  either  at  the  Bureau  of 
Registration  or  at  one  of  the  branch  offices.  If  he  shall  reside  at 
a  considerable  distance  his  agent  or  representative  may  make 
such  application. 

18.  The  Bureau  of  Registration  shall  publish  trade-mark  re- 
ports, announcing  therein  for  the  information  of  the  public  what 
trade-marks  have  been  registered   and  the  circumstances  con- 
nected with  the  cancellation  of  any  registration. 

19.  Should  any  one  infringe  the  right  to  the  exclusive  use  of 
a  trade-mark,   the   owner  thereof  may  bring  suit  against  the 
offender,  who  shall  be  required  to  pay  damages  if  investigation 
sustain  the  charges  made. 

20.  In  case  of  a  suit  for  the  infringement  of  a  trade-mark, 
procedure  shall  be  as  follows:     (1.)  If  the  defendant  be  a  for- 
eigner, the  local  magistrate  shall  send  a  dispatch  informing  the 
consul  of  defendant's  nationality  and  shall  sit  with  him  in  a  trial 
of  the  case.     (2.)  If  the  defendant  be  a  Chinese,  the  consul  con- 
cerned   shall    send   a   dispatch   informing   the   local   magistrate 
and  shall  sit  with  him  in  a  trial  of  the  suit.     (3.)   If  both  par- 
ties to  the  suit  should  be  foreigners,  or  if  both  parties  should 
be  Chinese,   immediately  upon  information  being  given  of  the 
infringement,  the  court  or  officer  having  jurisdiction  will  take 
action  as  required,  so  that  due  protection  may  be  given. 

21.  Any  one  guilty  of  any  of  the  following  offenses  may  be 
punished  with  not  more  than  one  year's  imprisonment  and  not 
more  than  three  hundred  taels  fine,  but  no  action  shall  be  taken 
against  any  such  offender  except  after  suit  duly  brought  by 
the  injured  party: 

(I.)  Imitation  of  another's  trade-mark  with  the  purpose  of 
using  such  imitation  upon  the  same  sort  of  goods  as  that  on 
which  the  original  is  used,  or  selling  such  imitation. 

(II.)  Making  an  imitation  of  another's  trade-mark  and  using 
the  same  upon  the  same  sort  of  goods  as  those  upon  which  the 
original  is  used,  or  with  a  knowledge  of  the  circumstances,  sell- 
ing such  goods  or  storing  them  with  the  intention  to  sell. 

(III.)  Using  the  imitation  of  another's  trade  mark  as  a  shop 
sign  in  advertisement  or  placard. 

(IV.)  While  knowing  that  the  receptacle  used  by  another 
(such  as  large  or  small  box,  bottle,  jar,  etc.),  or  the  wrapper 
bears  a  registered  trade-mark,  yet  using  the  same  for  goods  of 
the  same  sort  as  the  originals;  or,  while  knowing  the  circum- 
stances, selling  such  goods. 

(V.)  Purposely  importing  such  goods  into  any  port,  knowing 
well  that  such  action  will  injure  (the  sale  of)  another's  goods 
which  bear  a  registered  trade-mark. 

22.  When  on  account  of  the  circumstances  set  forth  above 
such  counterfeit  trade-marks,  or  the  instruments  used  in  making 


134  CHINA 

them  are  seized  and  confiscated,  the  goods,  receptacles  and 
signs  bearing  such  trade  mark,  since  it  cannot  be  distinguished 
from  the  genuine,  shall  all  be  destroyed. 

23.  Fees  for  application,  registration  and  issue  of  certificate, 
etc.,  shall  be  paid  by  all  persons,  whether  Chinese  or  foreign 
merchants,  as  follows: 

(I.)  Application  fee,  Kuan-p'ing  taels  5.00  each  mark. 

(II.)  Fee  for  registration  and  issue  of  certificate,  Kuan-p'ing 
taels  30.00  each  mark. 

(III.)  Registration  of  transfer  of  rights,  by  contract  of  sale 
or  partnership,  Kuan-p'ing  taels  20.00  each. 

(IV.)  Application  for  extension  of  expired  term  and  re- 
newal of  registration,  Kuan-p'ing  taels  25.00  each. 

(V.)  Copy  of  record  of  registration  of  trade-mark  Kuan- 
p'ing  taels  2.00.  (For  every  100  characters  over  100,  50  taels 
additional.) 

(VI.)  Examination  of  records,  for  each  half-hour, 
Kuan-p'ing  taels  1.00. 

(VII.)  Duplicate  lost  certificate,  Kuan-p'ing  taels  10.00  each. 

(VIII.)  Filing  complaint  of  infringement,  Kuan-p'ing  taels 
5.00  each. 

(IX.)  Application  for  reconsideration  of  rejected  trade- 
mark, Kuan-p'ing  taels  5.00  each. 

(X.)  Application  for  cancellation  of  registry,  Kuan-p'ing  taels 
30.00  each. 

(XI.)  Transfer  of  certificate  to  heirs,  Kuan-p'ing  taels  5.00 
each. 

24.  These  regulations  shall  be  of  force  from  and  after  Kuan- 
ghsu  XXX  year,  ninth  moon,  15th  day.     (October  23rd,  1904.) 

25.  Inasmuch  as  mutual  protection  is  required  by  the  treaties, 
if,  before  the  Bureau  of  Registration  shall  have  entered  upon 
its  duties,  request  for-  the  registration  of  any  trade-mark  shall 
have  been  presented  at  any  yamen  having  jurisdiction  the  Bu- 
reau shall  regard  the  application  as  having  been  already  prop- 
erly made. 

26.  If  within  six  months  after  the  Bureau  shall  have  com- 
menced operations  application  shall  be  made  for  the  registra- 
tion of  trade-marks  which  were  already  registered  in  another 
country  before  the   Bureau  began  its  work,   the   Bureau   shall 
recognize  such  trade-marks  as  entitled  to  precedence. 

27.  Although  before  the  Bureau  shall  have  been  established 
various  officials  may  have  issued  proclamations  giving  protec- 
tion to  various  trade-marks,  such  marks  shall  not  receive  the 
benefit  of  protection  unless  within  six  months  after  the  open- 
ing of  the  Bureau  application  shall  have  been  made  for  regis- 
tration according  to  the  provisions  of  these  regulations. 

28.  The  provisions  of  the  three  regulations  immediately  pre- 
ceding are   independent  of  the   requirements  of  Regulation   5. 


COLOMBIA  135 

All  of  the  above  regulations  are  to  be  put  into  operation  ex- 
perimentally. Matters  not  fully  provided  for  in  them  may  be 
taken  into  consideration  and  rules  referring  to  them  be  added 
after  these  shall  have  gone  into  effect. 

The  above  law  has  been  suspended  indefinitely. 


COLOMBIA 

The  Republic  of  Colombia  lies  between  the  Atlantic  and 
Pacific  oceans.  Its  area  is  about  480,000  square  miles,  and  the 
population  in  1911  was  estimated  to  be  4,670,650. 

COMMERCE — The  exports  consist  chiefly  of  cattle,  balsam, 
cacao,  cocoanuts,  coffee,  rice,  tobacco,  cotton,  cinchona,  bark, 
dried  birds,  drugs,  gold,  emeralds,  powder,  hats,  hides,  ores 
of  different  metals,  ivory,  nuts,  India  rubber,  silver,  timber, 
logwood,  Brazil  wood,  and  a  variety  of  plants  and  other  ar- 
ticles. The  imports  consist  of  every  description  of  merchan- 
dise and  articles  of  consumption. 

MONEY — The  monetary  unit  is  a  gold  dollar=U.  S.  $1.00. 

For  weights  and  measures  the  metrical  system  has  been 
adopted. 

Law. 

Law :  Trade-marks  are  registered  under  Decree  217  and 
218,  1900,  and  Decree  475  of  March  14,  1902. 

Duration. 
Unlimited. 

Requirements. 

Power  of  attorney  legalized  by  Colombian  Consul ;  certified 
copy  of  home  registration  legalized  by  Colombian  Consul;  ten 
copies  of  the  mark ;  one  electrotype. 

Who  May  Apply. 

Individual  persons  or  companies  who  first  made  use  of  a  trade 
mark  are  the  only  ones  entitled  to  acquire  the  ownership  of 
the  same.  In  case  of  a  dispute  between  two  or  more  possessors 
of  the  same  mark  the  ownership  shall  belong  to  the  first  owner. 
If  the  priority  of  possession  cannot  be  established,  the  owner- 
ship shall  belong  to  the  one  who  first  applied  to  the  respective 
office  for  the  registration  of  the  mark.  (Art.  7.) 

Mode   of  Application   and  Procedure. 

Every  Colombian  citizen  or  foreigner  who  is  the  owner  of 
a  trade-mark  shall  acquire  the  exclusive  right  to  use  it  in  the 
territory  of  the  republic  by  fulfilling  the  formality  of  having  it 


136  COLOMBIA 

registered   at   the    respective    office,    and   for   that   purpose   he 
shall  submit  himself  to  the  following  course  of  procedure: 

1.  He  shall  file,  either  personally  or  through  an  attorney,  a 
petition  to  the  Treasury  Department,  asking  for  the  registration 
of  his  trade-mark,  clearly  explaining  the  distinctive  sign  which 
he  wishes  to  use,  the  article  or  product  to  which  it  refers,  and 
the  place  where  said  article  or  product  is  manufactured. 

2.  The   application    referred   to   in    the   preceding  paragraph 
shall  be  written  on  stamped  paper  of  the  third  class,  and  shall 
be  accompanied  by  two  copies,  at  least,  of  the  trade-mark,  or 
the  representation  thereof  by  means  of  a  drawing  or  engraving, 
signed  by  the  applicant,  bearing'  the  same  date  a?  the  applica- 
tion.    A  revenue  stamp  of  class  first  shall  be  affixed  to  each 
copy. 

3.  The  application  shall  be  published  in  the  "Diario  Oficial," 
and  thirtv  days  thereafter,  if  no  opposition  is  made,  the  regis- 
tration of  the  trade-mark,  if  industrial,  shall  take  place. 

The  interested  party  shall  then  be  provided  with  a  certificate 
of  registration,  which  shall  be  evidence  of  his  exclusive  owner- 
ship of  the  mark.  This  certificate  shall  be  published  three  times 
in  the  "Diario  Oficial."  (Art.  1.) 

The  cost  of  publication  of  the  application  and  certificate 
shall  be  borne  by  the  appplicant.  (Art.  2.) 

Tf  the  trade-mark  whose  registration  is  requested  is  commer- 
cial, the  course  of  proceedings  shall  be  the  same  described  in 
Art.  1 :  but  the  certificate  shall  not  be  issued  until  sixtv  days 
have  elapsed  from  the  date  of  publication  of  the  application. 
(Art.  3.) 

Industrial  trade-marks  shall  be,  for  the  purpose  of  the  present 
decree,  all  phrases  or  signs  employed  to  distinguish  a  special 
product  destined  to  industrv  or  commerce.  Commercial  marks 
shall  be  those  phrases  or  distinctive  signs  to  be  used  by  a  mer- 
chant or  a  business  house.  (Art.  4.) 

Powers  of  attorney  executed  in  foreign  countries,  authoriz- 
ing anyone  in  Columbia  to  ask  for  the  registration  of  trade 
marks,  shall  have  to  be  authenticated  in  due  form  by  the  re- 
spective minister  or  consular  agent  of  the  republic  in  the  place 
of  execution,  provided  that  Colombia  has  accredited  such  of- 
ficials in  the  country  or  place  where  the  power  of  attorney  is 
executed.  (Art.  5.) 

Trade  marks  belonging  to  foreign  individuals  or  companies 
not  residing  in  Colombia  shall  not  be  admitted  to  registration, 
except  in  case  that  they  are  already  registered,  in  due  form 
and  through  the  regular  proceedings  of  law,  in  the  country 
of  origin,  this  registration  to  be  proved  by  an  authenticated 
copy  of  the  original  certificate.  The  copy  shall  be  then  attached, 
as  an  exhibit,  to  the  application.  (Art.  6.) 


COLOMBIA  137. 

The  registration  of  the  trade-marks,  whether  industrial  or 
commercial,  shall  be  made,  without  previous  examination  of 
the  usefulness  of  the  object,  or  of  the  quality  and  properties 
of  the  products  for  which  they  are  destined.  Everything  in 
this  respect  shall  be  under  the  exclusive  responsibility  of  the 
applicant,  and  the  rights  of  third  parties  shall  always  be  pre- 
served. (Art.  8.) 

Publication  having  been  made  in  the  "Diario  Oficial"  of  the 
applicant's  petition,  so  as  to  allow  anyone  interested  in  the  mat- 
ter to  come  and  make  opposition  to  the  granting  of  the  certifi- 
cate, and  an  opponent  having  in  fact  entered  his  appearance 
in  due  time,  and  made  the  proper  representations  on  the  sub- 
ject, as  provided  in  Art.  1  of  the  present  decree,  the  Secretary 
of  the  Treasury  shall  render  his  decision  in  the  case.  This 
decision  shall  put  an  end  to  all  executive  proceedings.  Parties 
not  satisfied  with  the  decision  may  make  use  of  their  rights  be- 
fore the  courts  of  justice. 

Infringements. 

Counterfeiters  of  trade  marks  shall  be  subject  to  the  penal- 
ties established  in  articles  663  and  664  of  the  Penal  Code. 

Assignments. 
A  trade-mark  is  assignable  with  the  good  will  of  the  business. 

Classification. 

There  is  no  special  classification  in  Colombia,  but  trade 
"narks  can  only  be  registered  in  respect  of  those  goods  men- 
tioned in  the  certified  copy  of  home  registration. 

Lazvs  in  Force  to  Prevent  the  Sale  or  Importation  of  Goods 
Bearing  a  False  Indication  of  Origin. 

No  laws  exist  prohibiting  the  sale  or  importation  of  goods 
bearing  a  false  indication  of  origin.  The  law  prohibits  the 
fraudulent  application  to  goods  of  another's  trade-name  or  of 
a  trade-mark  registered  in  Colombia.  A  civil  action  for  the 
purpose  of  claiming  damages  in  respect  of  these  offenses  can 
only  be  brought  by  the  person  injured.  A  criminal  action  may 
be  brought  by  any  foreign  merchant  affected,  either  acting 
through  the  representative  of  his  government  in  Colombia,  or 
in  any  other  way.  The  expense  of  judicial  proceedings  would 
usually  be  small.  The  indication  of  the  country  of  origin  of  im- 
ported goods  is  not  required  unless  they  are  classified  in  the 
Customs  Tariff  according  to  their  origin. 

Marking  Goods:      (optional)    "Marca  Registrada." 


138  CONGO  FREE  STATE 


CONGO  FREE   STATE 

The  Congo  Free  State  is  formed  from  the  territory  formerly 
administered  by  the  Congo  International  Association,  founded 
in  1883  by  Leopold  II.,  King  of  the  Belgians.  That  association, 
having  obtained  the  recognition  of  its  sovereignty  by  treaties 
in  1884  and  1885  with  most  of  the  European  nations  and  the 
United  States  of  America,  adhered,  February  26,  1885,  to  the 
resolutions  of  the  Congress  of  Berlin.  These  resolutions  es- 
tablish freedom  of  trade  in  the  basin  of  the  Congo,  and  declare 
absolutely  free  the  navigation  of  the  Congo  and  its  tributaries; 
provide  for  the  protection  of  the  natives  and  the  suppression 
of  the  slave  trade,  and  impose  on  the  Powers  which  signed 
the  Act  the  obligation  to  accept  the  mediation  of  one  or  more 
friendly  governments  should  any  serious  dispute  occur  concern- 
ing the  territories  of  the  conventional  basin  of  the  Congo.  An 
International  Conference  at  Brussels  in  1900  authorized  govern- 
ments which  have  territories  in  the  conventional  basin  of  the 
Congo  to  levy  certain  duties  on  imports.  The  state  was  placed 
under  the  sovereignty  of  Leopold  II.,  King  of  the  Belgians,  on 
the  basis  of  personal  union  with  Belgium,  but  it  .has  declared 
itself  perpetually  neutral  in  accordance  with  the  provision  of 
Chap.  III.  of  the  General  Act  of  Berlin.  By  a  will  dated  August 
2,  1889,  the  King  has  bequeathed  to  Belgium  all  his  sovereign 
rights  in  the  state.  On  July  21,  1890,  the  territories  of  the 
state  were  declared .  unalienable,  and  a  convention  of  July  3, 
1890,  between  Belgium  and  the  Free  State,  reserved  to  the 
former  the  right  of  annexing  the  latter  after  a  period  of  10 
years.  This  right  is  continued  under  an  act  of  August  10,  1901. 
The  central  government  at  Brussels  consists  of  the  King  of 
the  Belgians  and,  under  "his  orders,  a  Secretary  of  State,  who 
is  chief  of  the  departments  of  Foreign  Affairs,  Finance  and  the 
Interior.  A  Governor-General  represents  the  King  at  Boma 
and  administers  the  territories  in  accordance  with  the  King's 
orders.  The  precise  boundaries  of  the  Free  State  were  defined 
by  the  neutrality  declarations  of  August,  1885,  and  December, 
1894,  after  treaties  with  Germany,  Great  Britain,  the  Nether- 
lands, France  and  Portugal.  The  territory  is  divided  into  14 
administrative  districts :  Banana,  Boma,  Matadi,  the  Cataracts, 
Stanley  Pool,  Kwango  Oriental,  Lake  Leopold  II.,  Bangala, 
Equator,  Ubangi,  Welle,  Stanley  Falls,  Aruwimi  and  Lualaba- 
Kasai.  At  the  head  of  each  district  there  is  a  commissioner. 

INDIA  RUBBER  TRADE — India  rubber  is  obtained  by  incisions 
in  the  liane  Londolphia  Florida,  which  exists  in  all  the  terri- 
tories of  the  Free  State,  and  it  is  chiefly  found  in  the  Upper 
Congo  districts. 


CONGO  FREE  STATE  139 

The  only  exports  of  importance  consist  of  India  rubber, 
"ivory,  palm  oil,  palm  nuts,  white  copal,  cacao  and  earth-nuts. 

Principal  goods  imported  are  cotton  goods,  woolen  and  cot- 
ton blankets,  glass  beads,  coral,  imitation  jewelry,  china,  glass 
and  earthenware,  table  utensils  in  tinware  and  iron,  all  cheap 
hardware  goods,  mercury  and  perfumery. 

The  current  money  is  the  franc  100  centimes=9i/od.  For 
weights  and  measures  the  metrical  system  has  been  adopted. 

Law. 
Law,  April  26,  1888. 

Duration. 
Fourteen  years. 

Who  May  Register. 

Foreigners  as  well  as  natives  of  the  Congo  Free  State  are 
admitted  without  distinction  to  the  benefits  of  the  present  decree 
for  the  products  of  commercial  or  industrial  establishments  con- 
ducted either  within  or  without  the  country.  (Art.  4.) 

What  May  Be  Registered. 

Every  mark  used  to  distinguish  the  products  of  an  industry 
or  objects  of  commerce  is  considered  a  trade-mark  or  a  com- 
mercial mark. 

The  name  of  a  person,  as  well  as  the  firm  name  of  a  commer- 
cial or  industrial  house  may,  in  the  distinctive  form  given  it 
by  the  interested  party,  serve  as  a  trade-mark.  (Art.  1.) 

He  only  who  first  made  use  of  a  mark  may  effect  the  regis- 
tration of  it.  (Art.  3.) 

Mode   of  Application. 

The  person  registering  the  mark  should  furnish  (1)  A  copy 
in  triplicate  of  the  mark  adopted.  This  copy  should  be  drawn 
within  a  border,  which  should  not  exceed  8  centimetres  in 
height  and  10  centimetres  in  width.  (2)  An  electro  of  the 
mark.  The  dimensions  of  the  electrotype,  which  shall  be  of 
metal,  must  not  exceed  those  of  the  border  mentioned  above. 
(Art.  3.) 

The  registration  of  trade-marks  or  commercial  marks  shall 
be  inscribed  in  a  special  register,  and  signed  by  the  registrant  or 
his  attorney,  as  well  as  by  the  Administrator  General  or  his 
delegate.  The  power  of  attorney  is  to  be  attached  to  the  reg- 
istration. The  latter  shows  the  day  and  hour  of  registration. 
It  indicates  the  kind  of  industry  or  of  commerce  for  which  the 
registrant  has  the  intention  to  use  the  mark. 

A  certificate  of  the  registration  is  delivered  to  the  registrant. 

Advertisement  of  registered  marks  shall  be  made  in  the  Of- 
ficial Bulletin.  (Art.  1.) 


140  COSTA  RICA 

There  is  to  be  paid  a  tax  of  twenty-five  francs  for  each  mark 
registered. 

Assignment. 

A  trade-mark  may  not  be  assigned  except  with  the  establish- 
ment, the  articles  of  which,  either  of  manufacture  or  commerce, 
it  serves  to  distinguish. 

The  assignment  is  not  of  effect  in  regard  to  third  parties  until 
after  the  registration  of  a  copy  of  the  instrument  of  assign- 
ment. Mention  of  the  assignment  of  the  mark  shall  be  made 
on  the  margin  of  the  record  of  registration  and  copies  shall  be 
inscribed  on  the  certificate  sent  to  the  interested  parties  and  to 
the  Court  of  the  Congo. 

Every  assignment  of  a  mark  by  contract  between  living  per- 
sons or  by  will  is  subject  to  a  tax  of  ten  francs.  (Art.  5.) 

Penalties. 

There  shall  be  punished  by  a  fine  of  twenty-six  to  two  thou- 
sand francs  and  imprisonment  of  eight  days  to  six  months,  or 
by  one  of  these  penalties  only: 

(a)  Those  who  counterfeit  a  mark  and  those  who  fraudu- 
lently make  use  of  a  counterfeited  mark. 

(6)  Those  who  fraudulently  affix  to  the  products  of  their 
industry  or  articles  of  their  commerce  a  mark  belonging  to 
another. 

(c)  Those  who  knowingly  sell,  place  on  sale  or  in  circula- 
tion, products  bearing  a  mark  counterfeited  or  fraudulently  af- 
fixed. (Art.  6.) 

If  there  exist  extenuating  circumstances,  the  penalties  of  im- 
prisonment and  fines  may  be  reduced  below  the  minimum  fixed 
in  Article  6. 

Special  confiscation  may  be  pronounced  in  conformity  with 
Article  34  of  the  decree  of  January  7,  1886. 

A  public  action  may  not  be  prosecuted  except  on  the  com- 
plaint of  the  injured  person. 

Marking  Goods:     ''Marque  deposee." 


COSTA  RICA 

The  republic  of  Costa  Rica  is  the  most  southern  of  the  five 
Central  American  republics.  It  is  bounded  on  the  northwest 
by.  the  Republic  of  Nicaragua ;  on  the  southeast  by  Panama ;  on 
the  northeast  by  the  Atlantic  Ocean,  and  by  the  Pacific  Ocean  on 
the  southwest.  The  area  of  the  republic  is  estimated  at  38,330 
square  kiloms.,  or  about  23,000  English  square  miles.  The  popu- 
lation in  1911  was  estimated  to  be  385,910.  The  chief  ports  are 
Punta  Arenas  on  the  Pacific  and  Port  Limon  on  the  Atlantic. 


COSTA  RICA  141 

COMMERCE — The  principal  article  of  export  from  Costa  Rica 
is  coffee,  two-thirds  of  which  goes  to  England.  There  is  also 
a  considerable  export  of  bananas,  of  which  8,872,729  bunches 
were  exported  during  1910. 

MONEY,  WEIGHTS,  AND  MEASURES — The  monetary  unit  of 
Costa  Rica  is  the  gold  colon  (=100  centavos)=ls.  10^>d.= 
45  cents  United  States. 

For  weights  and  measures  the  metrical  system  has  been 
adopted. 

Law. 

Law  of  May  22d,  1896. 

Term. 

The  ownership  of  a  trade  mark  is  acquired  only  for  a  term 
of  fifteen  years,  but  may  be  renewed  indefinitely  for  ten  years. 
(Art.  5.) 

What  May  Be  Registered. 

Trade-marks  are  defined  to  be  the  names  of  manufacturers 
and  business  firms,  seals,  stamps,  engravings,  vignettes,  mono- 
grams, mottoes,  legends,  or  any  other  distinctive  signs  whatso- 
ever, serving  to  identify  the  products  of  a  manufactory  or  the 
articles  constituting  the  trade  of  a  commercial  house.  (Art.  1.) 

The  law  of  Costa  Rica  makes  the  names  of  manufacturers 
and  traders  registrable  as  trade-marks  and  confers  the  right  to 
the  exclusive  use  of  trade-marks  upon  the  first  registrant  (Art. 
3.)  Apparently,  therefore,  in  this  country  registration  of  a 
trade-name  under  the  trade-mark  law  is  necessary  to  its  pro- 
tection. 

Requirements. 

Power  of  attorney  legalized  by  Costa  Rican  Consul;  eight 
copies  of  the  mark,  and  one  electroptype. 

Renewals. 

To  renew  the  term  of  a  trade-mark  it  will  be  sufficient  for 
the  owner  to  make  a  declaration  to  that  effect  before  the  proper 
bureau  within  thirty  days  after  the  expiration  of  the  conces- 
sion. The  concession  shall  be  forfeited  if  no  declaration  is  made 
within  the  period  above  stated.  (Art.  6.) 

Infringements. 

The  responsibility  for  infringement  of  trade-marks  shall  be 
placed,  until  their  innocence  is  established,  upon  the  person  or 
persons  on  whose  account  the  fraud  has  been  committed,  the 
authors  of  the  forgery,  and  the  importers  or  dealers  of  the 
counterfeited  article  or  product.  (Art.  8.) 


142  CRETE 

Infringement  of  trade-marks  shall  be  punished  in  conformity 
with  Article  496,  Paragraph  3,  of  the  Penal  Code.  (Art.  9.) 

Laws  in  Force  to  Prevent  the  Sale  or  Importation  of  Goods 
Bearing  a  False  Indication  of  Origin. 

No  law  is  in  force  to  prevent  the  sale  or  importation  of  goods 
bearing  false  indications  of  origin,  except  that  for  the  protec- 
tion of  goods  having  duly  registered  trade-marks.  A  criminal 
action  could  be  brought  by  an  injured  party  or  his  attorney  for 
infringement  of  trade-marks.  If  a  Consul  acted  he  would  have 
to  hold  power  of  attorney.  The  cost  of  prosecution  would  be 
not  less  than  $300.00.  The  country  of  origin  must  be  stated 
in  the  Consular  invoice  and  a  false  description  in  such  invoice 
would  render  goods  liable  to  confiscation. 

Marking  Goods:     "Marca  Registrada." 


CRETE 

The  three  principal  ports  of  Crete,  one  of  the  largest  islands 
in  the  Mediterranean,  are  Candia,  Canea  and  Rethymo.  The 
other  ports  are  Suda,  Calyves,  Bali,  Melata,  San  Nicola  and 
Sitia.  The  staple  product  of  the  island  is  olive  oil,  which  is 
also  the  principal  article  of  export,  together  with  calonia,  wine, 
locust  beans,  soap,  almonds  and  cedars.  Wine  is  produced  in 
large  quantities,  the  total  export  amounting  to  about  1,000,000 
gallons.  The  greater  part  of  the  wine,  especially  that  of  in- 
ferior quality,  finds  its  way  to  Egypt  and  the  coast  of  Barbary, 
while  the  rest  is  bought  for  the  French,  German  and  Italian 
markets,  where  it  is  manipulated  and  sold  under  other  names. 
The  Cretan  wines,  being  very  alcoholic,  are  found  useful  for 
fortifying  the  weaker  qualities  of  France  and  Germany. 

The  imports  are  principally  Manchester  goods  and  woolen 
stuffs  and  cloth.  The  population  of  the  entire  island  is  upwards 
of  350,000. 

.   '  Law. 

Law  of  June  19,  1908. 

Term. 

The  legal  protection  of  the  registered  trade-mark  extends  to 
the  term  of  ten  years.  If  this  term  has  elapsed,  a  prolonga- 
tion may  be  applied  for,  which  will  be  granted  upon  the  ground 
of  Art.  4  and  those  following.  In  case  several  persons  apply 
for  the  prolongation  of  a  trade-mark  Already  lapsed,  the  pref- 


CRETE  143 

erence  will  always  be  given  to  the  last  owner  of  the  mark  in 
question.      (Art.  14.) 

Who  May  Apply. 

The  commercial  and  manufacturing  marks  of  industrials  for 
(use  on)  machines,  products  of  trade,  industry,  of  agriculture 
and  cattle  breeding,  are  recognized  in  Crete  and  enjoy  legal 
protection  based  upon  the  provisions  of  the  present  law. 

The  trade  marks  of  persons  belonging  to  foreign  States,  who 
reside  abroad,  are  recognized  in  Crete,  and  have  legal  pro- 
tection upon  the  condition  of  international  reciprocity  between 
the  State  of  Crete  and  the  State  to  which  the  foreigner  belongs. 
(Art.  1.) 

What  May  Be  Registered. 

All  marks  and  prints,  intended  to  distinguish  the  products  of 
industry  and  trade,  agriculture  and  cattle  breeding,  which  are 
found  in  commerce,  are  considered  to  be  manufacturing  and 
commercial  marks.  (Art.  2.) 

Trade-marks  may  consist  in  a  simple  name,  or  the  name  of 
a  company,  or  in  any  other  mark,  picture,  representation,  etc. 

Exception  is  made  of  representations  and  marks  which  of- 
fend against  public  order  and  morality. 

The  manufacturing  or  commercial  mark  is  affixed  directly 
upon  the  article  or  upon  the  packing  of  same,  by  pasting,  im- 
pressing or  engraving  or  by  any  other  means.  It  suffices  that 
the  mark  is  outwardly  visible.  (Art.  3.) 

Mode  of  Application. 

He  who  wishes  to  obtain  the  'recognition  and  protection  of  a 
trade-mark  is  obliged  to  present  to  the  Board  of  Finances  of 
the  local  government  a  suitable  petition  in  which  shall  be  stated : 

1st.    The  nature  of  his  business  and  his  domicile. 

2nd.  His  nationality,  proved  by  an  official  certificate. 

3rd.  Proof  that  he  has  paid  into  the  Treasury  of  the  Gov- 
ernment the  tax  of  100  francs. 

In  addition,  the  application  must  be  accompanied  by  two  im- 
pressions on  paper  of  the  trade-mark  in  question  and  an  elec- 
trotype of  same.  (Art.  4.) 

The  Secretary  of  the  Board  of  Finances  is  obliged  to  record 
the  application  provided  for  in  Art.  4,  immediately  upon  its 
receipt,  and  to  deliver  to  the  applicant  a  certificate  of  the  regis- 
tration effected,  which  must  bear  the  date  and  the  hour  of  ap- 
plication, as  well  as  the  number  of  the  record.  All  applica- 
tions of  manufacturing  and  commercial  marks  must  be  recorded, 
even  if  they  do  not  correspond  to  the  prescriptions  of  Art.  4, 
and  for  that  reason  are  defective.  (Art.  5.) 

A  defective  application  may  be  completed  later,  but  the  right 


144  CRETE 

of  priority,  according  to  Art.  11,  will  be  secured  only  at  that 
moment  in  which  the  petition  has  been  completed  in  accord- 
ance with  the  prescriptions  of  Art.  4.  (Art.  6.) 

As  soon  as  the  petition  is  complete  and  fulfills  the  legal  re- 
quirements, the  Board  of  Finances  issues  as  soon  as  possible  a 
decree  in  regard  to  the  recognition  of  the  trade-mark  applied 
for. 

The  decree  will  be  entered  in  a  special  register  for  commer- 
cial and  trade-marks  with  a  serial  number,  on  a  separate  page, 
upon  which  will  also  be  placed  a  representation  of  the  trade- 
mark. A  publication  of  the  trade-mark  applied  for  also  takes 
place  in  the  Official  Journal.  A  copy  of  the  decree  will  be 
delivered  to  the  applicant.  In  the  document  delivered,  the  num- 
ber of  the  entry  in  the  register  must  be  given,  and  the  number 
and  date  of  the  issue  of  the  Official  Journal  in  which  the  pub- 
lication has  taken  place.  To  this  document  must  also  be  affixed 
a  representation  of  the  commercial  or  manufacturing  mark. 
(Art.  7.) 

The  recognition  of  the  commercial  or  manufacturing  mark 
takes  place  as  soon  as  the  application  is  complete;  that  is,  fills 
the  legal  conditions.  (Art.  8.) 

If  several  marks  resembling  each  other  are  presented  for 
registration  that  one  which  is  first  presented  will  be  recog- 
nized. 

If  several  corresponding  trade-marks  come  up  for  application 
in  one  day,  the  preference  will  be  given  to  that  person  who 
first  has  publicly  announced  the  mark.  (Art.  11.) 

Assignments. 

The  rights  acquired  to  a  trade-mark  are  assignable  only  under 
the  condition  of  the  employment  of  same  in  the  industry  trade, 
agriculture  and  cattle  raising  for  which  the  protecting  mark 
is  intended. 

The  assignment  is  effective  only  if  a  corresponding  entry 
is  made  on  the  proper  page  of  the  register  intended  for  that 
purpose,  and  publication  in  regard  thereto  takes  place  in  the 
Official  Journal. 

For  each  assignment  of  a  trade-mark  50  francs  are  to  be 
paid  to  the  state.  (Art.  13.) 

Legal  Protection  and  Penalties. 

The  legal  protection  which  is  accorded  to  the  owner  of  a 
trade-mark  consists  in  this,  that  he  has  the  right: 

1st.  By  accusation  to  move  for  the  prosecution  of  him  who 
makes  wrongful  use  of  his  mark; 

2nd.  By  means  of  a  complaint  to  claim  from  the  person  in 


CUBA  145 

question,  upon  the  ground  of  provisions  of  the  civil  law,  com- 
pensation for  the  damages  caused  him.  (Art.  15.) 

Misuse  of  the  trade-mark  of  another  is  considered  to  be: 

1st.  Fraudulentlv  affixing  a  mark  belonging  to  another  to 
an  article  of  commerce; 

2nd.  The  counterfeiting  of  the  trade-mark  of  another  or 
the  fraudulent  use  of  a  counterfeited  trade-mark  for  his  own 
advantage. 

3rd.  The  representation  of  the  mark  of  another  with  a  view 
to  deceive  the  public,  or  the  fraudulent  employment  of  an  imi- 
tated mark; 

4th.  Knowingly  selling  or  offering  for  sale  an  article  which 
bears  a  counterfeited  or  fraudulently  imitated  trade-mark. 
(Art.  16.) 

The  party  guilty  of  making  misuse  of  a  trade-mark  will  be 
punished  with  imprisonment  of  from  one  to  six  months  and 
a  fine  of  from  200  to  1,000  drachmas. 

An  extract  of  the  judgment  of  the  court  will  be  published  in 
the  Official  Journal.  (Art.  17.) 

The  counterfeited  or  imitated  trade-marks  will  be  seized, 
even  in  case  the  defendant  is  acquitted. 

In  case  the  trade-mark  cannot  be  confiscated  without  the 
article  of  commerce,  the  court  causes  the  destruction  or  erasure 
of  the  mark.  The  guilty  party  bears  the  costs,  meanwhile, 
moreover,  there  takes  place  the  seizure  of  the  article  on  which 
is  found  the  trade-mark  to  be  destroyed.  (Art.  18.) 

If  the  recognition  of  a  trade-mark  takes  place  in  an  illegal 
manner,  same  will  be  declared  void  on  the  ground  of  a  decree 
of  the  competent  court  oj:  first  instance.  An  appeal  against  the 
decree  is  admissible. 

The  declaration  of  nullity  will  be  published  in  the  Official 
journal,  and  an  extract  therefrom  entered  upon  the  margin  of 
the  registration  effected  according  to  Art.  7. 

The  declaration  of  nullity  takes  effect  simultaneously  with  the 
publication  thereof.  (Art.  19.) 


CUBA 

This  island  is  the  largest  of  the  West  Indies.  The  area  is 
44,164  square  miles.  The  population  in  1908  was  estimated  to  be 
2,140,246.  On  January  1st,  1899,  Spanish  sovereignty  in  Cuba 
ceased,  and  its  occupation  by  the  military  forces  of  the  United 
States  commenced.  This  ended  on  May  20th,  1902,  when  the 
control  of  the  island  was  handed  over  to  the  new  Government. 

An  insurrection  broke  out  in  August,  1906,  and  the  island  was 
10 


146  CUBA 

placed  under  the  provisional  Government  of  a  Commissioner  ap- 
pointed by  the  United  States  of  America.  The  Provisional  Gov- 
ernment was  ended  in  January,  1909,  and  a  new  president 
assumed  office. 

The  principal  industries  of  Cuba  are  the  production  of  sugar, 
cigars  and  tobacco.  The  minor  exports  are  cabinet  and  dye 
woods,  honey,  wax,  sponges,  manganese,  iron  and  copper  ores 
and  fruit. 

The  principal  imports  into  Cuba  are  flour,  rice,  potatoes,  dried 
codfish,  groceries,  wines  and  liquors,  machinery,  woollen  and 
cotton  goods,  crockery,  hardware,  glassware,  cattle,  maize,  lard, 
beer,  and  "tasajo"  (dried  beef).  Flour  is  imported  from  Spain 
and  the  United  States,  the  bulk  of  rice  comes  from  India,  via 
Liverpool,  a  small  amount  from  Spain  and  the  United  States. 
Potatoes  are  imported  from  the  United  States,  Spain,  and  Ca- 
nary Islands,  codfish  from  the  United  States  and  Canada,  and  a 
small  amount  from  Europe,  groceries  chiefly  from  the  United 
States,  wines  and  liquors  almost  entirely  from  Spain.  The 
greater  part  of  the  sugar  machinery  comes  from  the  United  King- 
dom ;  agricultural  implements  from  the  United  States.  Almost 
all  tools  are  of  American  manufacture,  Germany  and  the  United 
Kingdom  supplying  few. 

MONEY,  WEIGHTS  AND  MEASURES — Dollar,  100  cents=l  Dollar 
United  States.  Weights  and  measures,  metric  system. 

Low. 

The  basic  law  is  the  Royal  Decree  of  August  21,  1884.  By  its 
terms  the  protection  afforded  extends  to  foreigners  only  so  far 
as  provided  by  treaties  of  reciprocity.  *  Under  the  Military  ad- 
ministration of  the  United  States,  War  Department  Circulars 
Nos.  12,  21,  34  and  38  were  published  during  1899  and  1900  pro- 
viding for  the  filing  of  certified  copies  of  United  States  Trade 
Mark  Registrations.  Civil  order  No.  511  of  December  18,  1900 ; 
No.  512  of  December  19,  1900;  No.  18  of  January  17,  1901  and 
No.  105  of  April  19,  1901,  each  amended  the  law  of  1884,  and  No. 
512  also  amended  Article  287  of  the  Penal  Code.  Civil  order 
No.  160  of  June  13,  1901,  defined  the  extent  and  limitations  of 
protection  accorded  to  trade  marks  (as  well  as  other  industrial 
property). 

Rules  of  May  5,  1903. 

Term. 

Fifteen  years ;  renewable. 

The  certificates  of  ownership  shall  become  extinct  and  ter- 
minate at  the  expiration  of  fifteen  years,  to  be  counted  from  the 
date  of  their  concession ;  but  they  may  be  renewed  by  exactly  the 
same  process  as  was  followed  for  their  acquisition.  (Art  17.) 


CUBA  147 

Who  May  Register. 

Cuban  merchants  and  manufacturers,  or  foreigners  belonging 
to  countries  having  treaties  with  Cuba  or  granting  reciprocity  to 
Cuban  citizens. 

W hat  May  Be  Registered. 

The  names  of  the  manufacturers,  merchants,  agriculturists,  or 
companies  formed  by  the  same,  the  names  of  business  houses, 
emblems,  coats  of  arms,  engravings,  vignettes,  marks,  stamps, 
seals,  stamps  in  relief,  letters,  numbers,  envelopes,  coverings, 
wrappings,  or  any  sign  of  whatever  class  and  form  used  by  the 
merchant,  agriculturist,  or  company  to  distinguish  their  products 
or  merchandise  and  secure  them  in  order  that  the  public  may 
know  and  distinguish  them  from  others  of  the  same  nature. 
(Art.  1.)  Trade  mark  registration  is  compulsory. 

What  May  Not  Be  Registered. 

The  national  coat  of  arms  and  the  insignia  and  decorations  of 
Spain,  unless  upon  competent  authority  to  that  effect. 

The  coats  of  arms,  insignia,  mottoes,  etc.,  of  foreign  States  or 
Nations  without  the  express  consent  of  the  respective  Govern- 
ments. 

Mode  of  Application. 

The  applicant  shall  petition  the  Department  of  Agriculture, 
Industry  and  Commerce,  either  in  person  or  through  an  attor- 
ney, riling  a  certified  copy  of  the  home  registration  legalized  by 
the  Cuban  Consul.  These  documents  must  be  accompanied  with  a 
translation  thereof  into  Spanish.  With  the  certified  copy,  five 
facsimiles  must  be  filed,  and  before  registration  is  accepted  a  fee 
of  $12.50,  U.  S.  currency,  must  be  paid. 

Penal  Provisions. 

The  following  shall  be  punished  by  Executive  order  with  a  fine 
of  from  $15  to  $45,  without  prejudice  to  the  civil  and  criminal 
actions  which  may  arise  from  their  acts : 

1.  Those  who  should  use  a  trade  mark,  industrial  drawing  or 
model  without  having  obtained  the  corresponding  certificate  of 
ownership. 

2.  Those  who,  although  legitimate  owners  of  a  trade  mark, 
should  apply  it  to  articles  different  from  those  for  which  it  was 
granted. 

3.  Those  who  should  detach  from  an  article  of  merchandise 
the  trade  mark  of  the  producer  or  owner  without  his  express 
consent. 


148  CUBA 

4.  Those  who  should  use  a  mark  after  the  lapse  of  ninety  days 
subsequent  to  the  publication  of  the  present  decree  without  having 
complied  with  the  provisions  of  the  same  in  its  transitory  arti- 
cles. 

5.  Those  who  should  use  a  trade  mark  transferred  to  them 
without  having  proved  and  entered  the  transfer  within  a  period 
of  ninety  days. 

Failure  to  pay  these  fines  shall  subject  the  delinquent  party  to 
imprisonment  at  the  rate  of  one  day  for  each  dollar  of  the  fine. 
(Art.  39.) 

The  following  shall  be  punished  with  a  fine  of  from  $45  to 
$135,  and  to  imprisonment  as  established  above  in  case  of  failure 
to  pay  the  fine : 

1.  Those  who  should  commit  a  second  offense,  this  fact  to  be 
established  by  proof  that  they  were  punished  for  the  same  offense 
during  the  five  preceding  years. 

2.  Those  who  should  use  a  trade  mark  forbidden  by  law.   (Art. 
40.) 

The  provisions  of  article  228  of  the  Penal  code  in  force  in  Cuba 
and  Porto  Rico  shall  be  applicable  to  those  who  should  use  coun- 
terfeited marks  imitating  in  such  a  way  the  genuine  ones,  that 
the  consumer  may  be  led  into  error  or  confusion.  (Art  41.) 

Those  who  should  change  wholly  or  in  part  their  own  trade 
marks,  industrial  drawings,  or  models  without  requesting  and 
obtaining  due  authority  to  do  so,  shall  forfeit  their  ownership 
of  a  mark.  (Art.  42.) 

The  action  to  denounce  the  violations  of  this  decree  shall  be 
public.  (Art.  43.) 

Assignment. 

The  trade  mark  is  assignable  only  with  the  assignment  of  the 
business;  unless  recorded  a  transfer  is  without  effect  as  to  third 
parties. 

Laws  in  Force  to  Prevent  the  Sale  or  Importation  of  Goods  Bear- 
ing a  False  Indication  of  Origin. 

No  law  is  in  existence  to  prevent  the  sale  or  importation  of 
goods  bearing  a  false  indication  of  origin,  but  in  the  event  of  a 
complaint  being  made  to  the  Department  of  Patents,  based  on  the 
Arrangement  signed  at  Madrid  on  April  14,  1891,  for  the  pre- 
vention of  false  indications  of  origin  on  goods,  the  matter  would 
-be  referred  by  that  Department  to  the  Department  of  Justice. 
It  is  thought  that  a  complaint  should  be  made  only  by  an  inter- 
ested party.  No  steps  are  taken  to  prevent  the  importation  of 
goods  bearing  false  indications  of  origin.  There  are  no  require- 
ments as  to  the  marking  of  imported  goods,  to  show  the  country 
or  place  of  origin  or  to  denote  that  they  are  foreign. 

Marking  Goods:    "Marca  Registrada"  (optional). 


CUBA  149 

Decisions  and  Decrees. 

By  a  decree  of  the  President  of  the  Cuban  republic,  dated 
August  15,  1910,  the  use  of  the  red  cross  is  prohibited,  except 
with  the  authority  of  the  Red  Cross  Society.  Trade  marks  reg- 
istered prior  to  April  16,  1907,  are  exempt  from  the  provisions 
of  the  decree  and  their  use  by  the  registrants  is  permitted,  until 
the  expiration  of  the  term  for  which  they  were  granted.  The 
renewal  of  such  registrations  is,  however,  forbidden.  The  regis- 
tration of  new  trade  marks,  embodying  the  name  or  the  emblem 
of  the  red  cross  is  forbidden,  whether  they  be  native  marks  or 
foreign  marks. 

The  constitutionality  of  this  decree  is  questioned.  The  use  of 
trade  marks  is  regulated  by  royal  ordinance  of  August  21,  1884, 
which  enumerates  the  signs  or  emblems  that  may  be  used  as 
trade  marks,  and  does  not  prohibit  the  use  of  the  red  cross.  The 
only  way  in  which  this  law  can  be  amended,  under  the  Cuban 
constitution,  seems  to  be  by  act  of  congress.  It  would  appear, 
therefore,  that  the  decree  of  the  president  is  an  usurpation  of  the 
powers  of  the  legislature,  and  therefore,  invalid. 


An  application  having  been  made  for  registration  of  a  mark 
consisting  of  the  words  "Cazalla  Triple  Brandy"  for  alcoholic 
liquors,  the  Secretary  of  Agriculture,  Commerce  and  Labor  held 
that  the  phrase  was  descriptive,  and  therefore,  not  registrable  as 
a  trade  mark,  in  view  of  the  fact  that  the  word  "brandy"  was  the 
name  of  a  common  alcoholic  liquor  manufactured  by  the  appli- 
cant. Upon  appeal  to  the  president  of  the  republic,  the  latter 
official  holds  that,  although  the  word  "brandy"  is  a  generic  term, 
the  additional  words  prefixed  to  it  give  to  the  mark  a  peculiar 
character,  differentiating  it  from  other  marks  and,  there  being 
no  prior  registration  with  which  it  conflicts,  the  application  should 
be  granted. 


Office  of  the  Secretary  of  Agriculture,  Commerce  and  Labor. 

Inasmuch  as  the  Royal  Decree  of  August  21,  1884,  dealing 
with  the  subject  of  marks,  defines  in  Chapter  VII  the  infractions 
that  are  punishable  by  the  Government,  among  which  we  find 
those,  relating  to  the  use  of  marks  for  which  a  suitable  Certificate 
of  Ownership  has  not  been  obtained,  and  as  in  general  infrac- 
tions of  this  character  are  due  to  ignorance  of  said  penal  regula- 
tions, attention  is  again  called  to  the  fact  that  the  same  are  still  in 
force,  as  has  been  done  in  previous  circulars,  emanating  from  the 
Office  of  the  Secretary,  giving  notice  that  the  punishments,  pre- 


150  CUBA 

scribed  in  the  Law,  will  be  rigorously  dealt  out  to  the  infractors, 
in  case  the  complaints  that  are  filed  are  proven. 

Therefore  the  order  of  the  Hon.  Secretary  of  this  Department 
shall  be  published  in  the  Official  Gazette,  for  the  information  of 
manufacturers,  merchants,  agriculturists  and  industrials  of  any 
class,  who  may  use  marks  without  having  them  duly  registered 
in  said  Office  of  the  Secretary. 

Havana,  May  24,  1909. 

(Signed)     Luis  PEREZ,  Asst.  Secretary. 


In  the  United  States,  the  acts  of  the  administrative  officers  in- 
volving judicial  functions,  such  as  conflicting  rights  to  trade 
marks,  are  commonly  made  renewable  by  the  courts,  but  under 
the  Cuban  constitution  the  separation  between  the  executive  and 
judicial  branches  of  the  government  is  carried  to  such  an  extent 
that  the  right  to  review  the  acts  of  an  administrative  head  of 
department  is  given  to  the  president  of  the  republic.  The  officer 
being  regarded  as  an  administrative  officer  and  his  acts  as  ad- 
ministrative acts,  the  constitution,  logically  perhaps,  keeps  the 
question  of  the  determination  of  the  validity  of  his  rights  in  the 
hands  of  the  executive  branch  of  the  government.  Whether  this 
entire  separation  and  independence  one  from  the  other,  of  the 
two  branches  of  the  government,  is  calculated  to  secure  a  just 
discharge  of  administrative  duties  may  be  open  to  grave  question. 
At  any  rate  it  is  quite  foreign  to  our  idea  of  the  degree  of  inde- 
pendence which  the  executive  branch  of  the  government  should 
enjoy. 

In  the  case  in  question,  the  trade  mark  "Oriental"  had  been 
registered  to  a  certain .  party  for  hair  dyes.  Subsequently  an 
application  was  made  for  the  registration  of  the  name  "Conti- 
nental" for  the  same  goods  and  the  registrant  of  the  prior  mark 
opposed  the  registration,  claiming  that  it  was  an  imitation  of  the 
mark  already  registered,  not  only  in  the  resemblance  between  the 
words,  but  in  the  color  and  form  of  the  receptacles  in  which  the 
goods  were  enclosed.  The  Secretary  of  Agriculture  nevertheless 
granted  the  registration  and  an  appeal  was  taken  to  the  President 
of  the  republic.  The  latter  official,  considering  the  resemblance 
between  the  words  and  also  between  the  articles  themselves  as 
they  were  presented  upon  the  market,  held  that  the  resemblance 
was  such  as  to  cause  confusion  on  the  part  of  the  public  and  to 
damage  the  business  of  the  registrant.  The  president  pointed  out 
that  not  only  in  sound  and  appearance  did  the  words  resemble 
each  other,  but  in  their  significance  as  well,  and,  reversing  the 
decision  of  the  Secretary  of  Agriculture,  directed  the  cancellation 
of  the  mark.  (Gaceta  Oficial,  Nov.  20,  1909.) 


CUBA  151 

TRADE  NAMES  IN  CUBA 

The  Cuban  Patent  Office  has  adopted  a  commendable  caution 
in  registering  trade  marks  for  which  application  is  made  by 
parties  other  than  those  to  whose  efforts  their  value  is  due.  Fol- 
lowing are  some  recent  applications,  with  the  reasons  for  their 
refusal : 

"Faultless"  for  men's  shirts  and  cuffs. — Because  the  title  ap- 
plied for  corresponds  to  an  American  trade-mark,  for  distinguish- 
ing shirts  which  are  imported  into  this  republic  by  the  trade  in 
general. 

"Zig-Zag,"  for  candy  made  with  corn  and  peanuts. — By  reason 
of  the  information  given  by  the  Chamber  of  Commerce,  Industry 
and  Navigation  to  the  effect  that  the  said  mark  belongs  to  D.  L. 
Clark  &  Co.,  of  Louisiana,  U.  S.  A. 

"La  Praviana"  for  pork  sausages  and  all  kinds  of  sausages 
and  hams. — Because  the  title  applied  for  is  used  by  Messrs.  Cairo 
&  Co.,  of  New  York,  on  the  pork  sausages  and  other  sausages 
which  they  import  into  this  market. 

"La  Scvillana,"  for  olive  oil. — Because  the  oil  from  the  factory 
of  Messrs.  Montero,  Quelle  y  Cia.  is  imported  here  with  the  same 
mark. 

"Globe,"  for  glucose  and  starch. — Because  a  starch  is  imported 
into  this  market  by  the  New  York  Glucose  Co.,  of  the  United 
States,  bearing  the  same  mark  as  that  applied  for. 

"Diebold's  Special,"  for  safe  deposit  vaults. — Because  it  is 
liable  to  confusion  with  the  same  product  imported  into  this  re- 
public by  the  Diebold  Safe  &  Lock  Co.,  of  the  U.  S. 

"Cnbana"  for  biscuits,  extra  fine. — Because  the  mark  applied 
for  is  used  in  the  biscuit  industry  to  designate  a  special  kind,  and 
the  granting  of  this  word  as  a  mark  would  result  in  a  monopoly 
injurious  to  the  manufacturers  of  the  same  line  of  business. 

"Daisy,"  for  weighing  scales. — Because  of  the  information 
given  by  the  Chamber  of  Commerce,  Industry  and  Navigation  to 
the  effect  that  the  scales  received  by  the  trade  in  general  from  the 
U.  S.  bears  the  same  mark  as  that  applied  for. 

The  Cuban  Patent  Office  has  rendered  a  decision  involving  the 
question  of  the  rights  of  American  firms  under  Section  Eight  of 
the  International  Convention  which  provides  that  commercal 
names  shall  be  protected  in  the  various  countries  of  the  Inter- 
national Union  without  the  necessity  of  registration.  Applica- 
tion was  made  by  a  native  of  Cuba  for  the  registration  of  the 
word  "Manhattan"  as  a  trade  mark  for  shirts.  The  Manhattan 
Shirt  Company  of  New  York,  learning  of  the  application,  filed 
an  opposition  thereto  with  the  Cuban  Patent  Office,  setting  up  its 
rights  under  the  section  of  the  International  Convention  above 
referred  to.  The  office  sustained  the  opposition  and  refused  to 
register  the  mark,  upon  the  grounds  advanced  by  the  American 
firm. 


152  CURACAO 


CURACAO,   OR   DUTCH   WEST    INDIES 

Curacao,  the  largest  island  of  the  Dutch  West  Indies,  is 
situated  in  the  Caribbean  Sea,  off  the  north  coast  of  Venezuela, 
and  extends  from  northwest  to  southeast  in  latitude  12°  6' 
north  and  longitude  05°  69'  west.  Population  in  1911,  42,000. 
There  is  telegraphic  communication  to  all  parts  of  the  world. 

Provisions,  such  as  flour,  cornmeal,  breadstuffs,  lard,  kerosene, 
lumber  and  ice,  are  imported  from  the  United  States  of  America 
regularly  by  two  British  vessels,  and  an  American  line  of  steam- 
ships calling  here  weekly  with  European  and  American  mails,  and 
connecting  witli  homewardbound  steamships  from  Puerto  Cabello 
and  La  Guaria,  as  also  with  Coro  and  Maracaibo  boats.  The 
principal  articles  of  exports  are  salt,  divi-divi,  phosphate  of  lime, 
aloes,  orange  peel,  goatskins  and  straw  hats. 

Monetary  unit  is  the  Dutch  Florin=100  cents=ls.  8d.=40 
cents  United  States;  for  weights  and  measures,  metrical  system. 

Law. 

Law :  November  19,  1893,  as  amended  by  the  Law  of  the  31st 
of  May,  1905. 

Duration. 

Twenty  years ;  may  be  renewed  before  the  expiration  of  the 
twenty  year  period  for  a  similar  term. 

Mode  of  Application. 

Registration  must  be  applied  for  at  the  Branch  Office  of  the 
Industrial  Property  Office  at  Willemstad, 

Requirements. 

Power  of  attorney  (not  legalized).  One  power  suffices  for 
several  applications  filed  at  the  same  time. 

Ten  copies  of  the  Mark. 

Electrotype,  measuring  in  length  and  width  not  under  1,5 
centimetres,  and  not  exceeding  10  centimetres,  and  of  a  depth 
exactly  24  millimetres. 

The  registration  is  published  in  the  "Curacaosche  Courant" 
(Official  Gazette). 

Assignments. 

For  registering  an  assignment  it  is  absolutely  necessary  that 
the  good  will  and  business  of  the  original  proprietor  of  the  trade 
mark  shall  also  be  assigned  to  the  subsequent  proprietor.  For 
assignment  the  following  documents  are  necessary  : 

Power  of  attorney  (not  legalized). 


CYPRUS  153 

A  copy  of  the  assignment  of  the  business  to  the  new  proprie- 
tor. This  document  must  be  executed  before  a  notary  and  legal- 
ized before  a  Dutch  Consul ;  it  is  not  returned. 

A  certificate  of  transfer  is  also  published  in  the  Official  papers. 

A  mere  change  in  the  name  of  the  proprietorship  can  only  be 
recorded  in  the  Trade  Marks  register  by  payment  of  the  same 
government  fees  and  by  fulfilling  the  same  formalities  as  for 
assignments. 

Classification  and  other  formalities  the  same  as  Dutch  East 
Indies. 


CYPRUS 

The  island  of  Cyprus  is  adminstered  by  Great  Britain  under  a 
convention  with  Turkey  in  1878.  It  is  situated  in  the  extreme 
east  of  the  Mediterranean,  and  has  an  area  of  3,584  square  miles, 
and  a  population  in  1911  of  352,171.  The  capital  is  Nicosia,  in 
the  centre  of  the  island.  The  principal  ports  are  Larnaca  and 
Limassol.  The  products  of  the  island  are  grain,  cotton,  linseed, 
aniseed,  wool,  skins,  wine  and  spirits,  olive  oil,  locust  beans,  silk, 
salt  and  sponges.  The  principal  industries  of  the  island  consist 
of  silk  weaving  and  tanning,  which  are  carried  on  at  Nicosia. 

The  industry  of  the  island  is  principally  agricultural.  Fruit 
and  vegetables  are  raised  in  considerable  quantities;  also  wine 
and  spirits,  principally  exported  to  Egypt;  there  is  also  a  con- 
considerable  industry  in  sponge  fishing; 

MONEY,  WEIGHTS  AND  MEASURES — Money :  40  paras=l  cop- 
per; piastre=l  l/3d.=about  3  cents  United  States,  9  piastres  (c/p) 
=350  paras=l  shilling=24  cents  United  States.  Weights  and 
measures:  the  oke  (in  weight)  =2  4/5ths  British  standard  pounds; 
the  oke  (in  liquid  measure)  =2  1/4  pints  or  400  drachms;  the 
cantar=44  okes ;  the  kile=l  Imperial  bushel. 

Law. 
Law  No.  VIII,  July  11,  1910. 

Duration  and  Renewal. 

The  registration  of  a  trade  mark  shall  be  for  a  period  of  four- 
teen years,  but  may  be  renewed  from  time  to  time  in  accordance 
with  the  provisions  of  this  Law. 

The  Registrar  shall,  on  application,  made  by  the  registered 
proprietor  of  a  trade  mark  in  the  prescribed  manner  and  within 
the  prescribed  period,  renew  the  registration  of  such  trade  mark 
for  a  period  of  fourteen  years  from  the  expiration  of  the  original 
registration  or  of  the  last  renewal  of  registration,  as  the  case  may 


154  CYPRUS 

be,  which  date  is  herein  termed  "the  expiration  of  the  last  regis- 
tration." 

What  May  Be  Registered. 

A  registrable  trade  mark  must  contain  or  consist  of  at  least 
one  of  the  following  essential  particulars : 

(1)  The  name  of  a  company,  individual,  or  firm  represented 
in  a  special  or  particular  manner ; 

(2)  The  signature  of  the  applicant  for  registration  or  some 
predecessor  in  his  business ; 

(3)  An  invented  word  or  invented  words; 

(4)  A  word  or  words  having  no  direct  reference  to  the  char- 
acter or  quality  of  the  goods,  and  not  being  according  to  its 
ordinary  signification  a  geographical  name  or  a  surname. 

(5)  Any  other  distinctive  mark,  but  a  name,  signature,  or 
word  or  words  other  than  such  as  fall  within  the  descriptions  in 
the  above  paragraphs   (1),   (2),  (3)  and  (4),  shall  not,  except 
by  order  of  the  Court,  be  deemed  a  distinctive  mark ; 

Provided  always  that  any  special  or  distinctive  word  or  words, 
letter,  numeral,  or  combination  of  letters  or  numerals  used  in 
Cyprus  as  a  trade  mark  by  the  applicant  or  his  predecessors  in 
business  before  the  first  day  of  January,  one  thousand  eight  hun- 
dred and  ninety-eight,  which  has  continued  to  be  used  (either  in 
its  original  form  or  with  additions  or  alterations  not  substantially 
affecting-  the  identity  of  the  same)  down  to  the  date  of  the  appli- 
cation for  registration  shall  be  registrable  as  a  trade  mark  under 
this  Law. 

Mode  of  Application. 

(1)  Any  person  claiming  to  be  the  proprietor  of  a  trade  mark 
who  is  desirous  of  registering  the  same  must  apply  in  writing  to 
the  Registrar  in  the  prescribed  manner. 

(2)  Subject  to  the  provisions  of  this  Law  the  Registrar  may 
refuse  such  application,  or  may  accept  it  absolutely  or  subject  to 
conditions,  amendments,  or  modifications. 

(3)  In  case  of  any  such  refusal  or  conditional  acceptance  the 
Registrar  shall,  if  required  by  the  applicant,  state  in  writing  the 
grounds  of  his  decision  and  the  materials  used  by  him  in  arriving 
at  the  same,  and  such  decision  shall  be  subject  to  appeal  to  the 
Court. 

(4)  An  appeal  under  this  section  shall  be  made  in  the  pre- 
scribed manner,  and  on  such  appeal  the  Court  shall,  if  required, 
hear  the  applicant  and  the  Registrar,  and  shall  make  an  order 
determining  whether,   and   subject  to  what  conditions,   amend- 
ments, or  modifications,  if  any,  the  application  is  to  be  accepted. 

(5)  Appeals  under  this  section  shall  be  heard  on  the  mate- 
rials so  stated  by  the  Registrar  to  have  been  used  by  him  in  ar- 
riving at  the  decision  and  no  further  grounds  of  objection  to  the 
acceptance  of  the  application  shall  be  allowed  to  be  taken  by  the 


CYPRUS  155 

Registrar,  other  than  those  stated  by  him,  except  by  leave  of  the 
Court  hearing  the  appeal.  Where  any  further  grounds  of  ob- 
jection are  taken  the  applicant  shall  be  entitled  to  withdraw  his 
application  without  payment  of  costs  on  giving  notice  as  pre- 
scribed. 

(6)  The  Registrar  or  the  Court,  as  the  case  may  be,  may  at 
any  time,  whether  before  or  after  acceptance,  correct  any  error 
in  connection  with  the  application,  or  may  permit  the  applicant 
to  amend  his  application  upon  such  terms  as  they  may  think  fit. 

When  an  application  for  registration  of  a  trade  mark  has  been 
accepted,  whether  absolutely  or  subject  to  conditions,  the  Reg- 
istrar shall,  as  soon  as  may  be  after  such  acceptance,  cause  the 
application  to  be  advertised  in  the  prescribed  manner.  Such  ad- 
vertisement shall  set  forth  all  conditions  subject  to  which  the 
application  has  been  accepted. 

When  an  application  for  registration  of  a  trade  mark  has  been 
accepted  and  has  not  been  opposed,  and  the  time  for  notice  of 
opposition  has  expired,  or  having  been  opposed  the  opposition 
has  been  decided  in  favor  of  the  applicant,  the  Registrar  shall, 
unless  the  Court  otherwise  direct,  register  the  said  trade  mark, 
and  the  trade  mark,  when  registered,  shall  be  registered  as  of  the 
date  of  the  application  for  registration,  and.  such  date  shall  be 
deemed  for  the  purposes  of  this  Law  to  be  the  date  of  registra- 
tion. 

Opposition. 

(1)  Any  person  may,  within  the  prescribed  time  from  the 
date  of  the  advertisement  of  an  application  for  the  registration  of 
a  trade  mark,  give  notice  to  the  Registrar  of  opposition  to  such 
registration. 

(2)  Such  notice  shall  be  given  in  writing  in  the  prescribed 
manner,  and  shall  include  a  statement  of  the  grounds  of  oppo- 
sition. 

(3)  The  Registrar  shall  send  a  copy  of  such  notice  to  the 
applicant,  and  within  the  prescribed  time  after  the  receipt  of  such 
notice,  the  applicant  shall  send  to  the  Registrar,  in  the  prescribed 
manner,  a  counter-statement  of  the  grounds  on  which  he  relies 
for  his  application,  and,  if  he  does  not  do  so,  he  shall  be  deemed 
to  have  abandoned  his  application. 

(4)  If  the  applicant  sends  such  counter-statement,  the  Reg- 
istrar shall  furnish  a  copy  thereof  to  the  persons  giving  notice 
of  opposition,  and  shall,  after  hearing  the  parties,  if  so  required, 
and  considering  the  evidence,  decide  whether,  and  subject  to  what 
conditions,  registration  is  to  be  permitted. 

(5)  The  decision  of  the  Registrar  shall  be  subject  to  appeal 
to  the  Court. 

(6)  An  appeal  under  this  section  shall  be  made  in  the  pre- 
scribed manner,  and  on  such  appeal  the  Court  shall,  if  required, 


156  CYPRUS 

hear  the  parties  and  the  Registrar,  and  shall  make  an  order 
determining  whether,  and  subject  to  what  conditions,  if  any, 
registration  is  to  be  permitted. 

(7)  On  the  hearing  of  any  such  appeal  any  party  may  either 
in  the  manner  prescribed  or  by  special  leave  of  the  Court  bring 
forward  further  material  for  the  consideration  of  the  Court. 

(8)  In  the  proceedings  under  this  section  no  further  grounds 
of  objection  to  the  registration  of  a  trade  mark  shall  be  allowed 
to  be  taken  by  the  opponent  or  the  Registrar  other  than  those 
stated  by  the  opponent  as  hereinabove  provided  except  by  leave 
of  the  Court  hearing  the  appeal.    Where  any  further  grounds  of 
objection  are  taken  the  applicant  shall  be  entitled  to  withdraw 
his  application  without  payment  of  the  costs  of  the  opponent  on 
giving  notice  as  prescribed. 

(9)  In  any  appeal  under  this  section,  the  Court  may,  after 
hearing  the  Registrar,  permit  the  trade  mark  proposed  to  be  reg- 
istered to  be  modified  in  any  manner  not  substantially  affecting 
the  identity  of  such  trade  mark,  but  in  such  case  the  trade  mark 
as  so  modified  shall  be  advertised  in  the  prescribed  manner  before 
being  registered. 

(10)  The  Registrar  shall  have  power  in  proceedings  under 
this  section  to  award  to  any  party  such  costs  as  he  may  consider 
reasonable,  and  to  direct  how  and  by  what  parties  they  are  to"  be 
paid. 

(11)  If  a   party  giving  notice  of  opposition  or  of  appeal 
neither  resides  nor  carries  on  business  in  Cyprus  the  Registrar  or 
the  Court,  as  the  case  may  be,  may  require  such  party  to  give 
security  for  costs  of  the  proceedings  before  him  or  if  relative  to 
such  opposition  or  appeal  and  in  default  of  such  security  being  duly 
given  may  treat  the  opposition  or  appeal  as  abandoned. 

Assignment. 

A  trade  mark  when  registered  shall  be  assigned  and  transmitted 
only  in  connection  with  the  good  will  of  the  business  concerned  in 
the  goods  for  which  it  has  been  registered  and  shall  be  de- 
terminable  with  that  good  will.  But  nothing  in  this  section  con- 
tained shall  be  deemed  to  affect  the  right  of  the  proprietor  of  a 
registered  trade  mark  to  assign  the  right  to  use  the  same  in  any 
British  possession  or  protectorate  or  foreign  country  in  connec- 
tion with  any  goods  for  which  it  is  registered  together  with  the 
good  will  of  the  business  therein  in  such  goods. 

Classification. 

A  trade  mark  must  be  registered  in  respect  of  particular  goods 
or  classes  of  goods. 

Infringement. 

In  an  action  for  the  infringement  of  a  trade  mark  the  Court 
trying  the  question  of  infringement  shall  admit  evidence  of  the 


DANISH  WEST  INDIES  157 

usages  of  the  trade  in  respect  to  the  get-up  of  the  goods  for 
which  the  trade  mark  is  registered,  and  of  any  trade  marks  or 
get-up  legitimately  used  in  connection  with  such  goods  by  other 
persons. 

Requirements. 

Power  of  attorney;  six  copies  of  the  mark;  one  electro  or 
wood  cut. 

Marking  of  Trade  Marks. 

"Registered  Trade  Mark." 


DANISH  WEST  INDIES 

The  island  of  St.  Thomas  is  about  13  English  miles  in  length 
by  3  in  average  breadth,  and  has  an  area  of  about  70  English 
square  miles  and  a  population  of  about  20,000.  It  is  formed  by 
lofty  hills  mostly  extending  from  east  to  west,  the  highest  attaining 
an  altitude  of  1,480  feet  at  its  highest  point  above  the  ocean  level. 
The  sea  all  round  is  studded  by  several  small  islets  or  "keys"  be- 
longing to  the  main  island,  and  at  about  two  miles  distance  north- 
east lies  the  large  but  thinly-populated  island  of  St.  John's,  also 
Danish  territory;  to  the  south,  the  Danish  island  of  St.  Croix, 
40  miles  distant.  There  is  a  fine  harbor  where  200  vessels  can 
anchor  in  safety,  only  exposed  to  winds  from  S.  W.  round  by 
S.  to  S.  to  S.  E.  by  E.,  but  winds  from  these  quarters  seldom  pre- 
vail. There  are  large  coaling  depots  and  wharves,  and  steamers 
drawing  30  feet  can  coal  alongside  at  the  rate  of  80  to  100  tons  per 
hour,  during  day  or  night;  a  repairing  slip  where  vessels  of  1,000 
tons  can  be  hauled  up;  an  iron  floating  dock,  capable  of  lifting 
vessels  of  3,000  tons  weight,  300  feet  keel  and  20  feet  draught; 
a  steam  factory  with  first-class  means  of  repairing  steamers  re- 
quiring to  refit ;  also  shipwrights'  yards  where  work  is  well  exe- 
cuted and  a  large  supply  of  spars,  etc.,  kept  on  hand,  as  this  port 
is  resorted  to  by  vessels  in  distress. 

St.  Thomas  now  furnishes  goods  but  to  a  few  of  the  neighbor- 
ing islands,  including  some  parts  of  Haiti  and  St.  Domingo,  and 
still  has  several  regular  lines  of  steamers  running  here,  which  is 
their  West  India  coaling  station  and  for  a  few  their  head  station 
and  is  annually  visited  by  a  large  number  of  sailing  and  steam 
ships  of  all  nationalities,  for  coals,  for  provisions,  for  repairs,  and 
for  freight  employment. 

Law. 

Law :  Ordinance,  April  1,  1910. 

The  Danish  trade  mark  law  has  been  so  extended  that  registra- 
tion under  it  shall  afford  protection  to  the  mark  in  the  Danish 


158  DENMARK 

West  Indies.  The  protection  thus  obtained  covers  a  period  of 
ten  years  from  the  date  of  registration  of  the  Danish  trade  mark. 

The  protection  may  be  renewed  repeatedly  for  another  period 
of  ten  years  by  filing  a  trade  mark  in  Denmark. 

The  Ordinance  of  April  1,  1910,  allows  extension  to  the  Danish 
West  Indies  of  a  trade  mark  which  has  been  first  registered  in 
Denmark. 

Requirements  for  Registration. 

1.  Official  copy  of  the  registry  in  Denmark. 

2.  Power  of  attorney,  legalized  by  a  Danish  Consul ;  electro- 
type and  five  copies  of  the  mark. 


DENMARK 

Although  one  of  the  smallest  kingdoms  of  Europe,  Denmark 
is  at  the  same  time  one  of  the  most  extensively  cultivated.  Its 
fields  and  meadow  lands  are  greater  in  extent  than  those  of 
Portugal  and  Belgium,  but  little  less  than  those  of  Sweden, 
and  five  times  greater  than  those  of  Norway,  and  every  year 
shows  an  onward  movement  in  increased  culture  and  improved 
agriculture.  Being  a  country  of  few  native  industries,  and  de- 
pending mainly  on  the  produce  of  the  land  and  its  live  stock  for 
subsistence,  the  prosperity  of  the  country  is  affected  consider- 
ably by  good  or  bad  harvests. 

The  area  of  Denmark  is  about  15,218  English  square  miles. 
The  population  of  the  kingdom  on  the  1st  January,  1911,  was 
estimated  to  be  2,982,119. 

MONEY,  WEIGHTS  AND- MEASURES — The  monetary  unit  in  Den- 
mark is  the  Krone=100  Ore=ls.  1  l/3d.=about  27  cents 
United  States.  As  to  weights  and  measures  this  country  has 
adopted  the  metrical  system. 

Laws. 

Laws:  April  11,  1890;  December  19,  1898;  March  29,  1904; 
April  27,  1894;  March  30,  1906;  April  19,  1907. 

Ordinances:  November  24,  1893;  September  28,  1894;  Sep- 
tember 12,  1902;  August  30,  1906. 

Regulation:     April  11,  1890. 

Duration. 

The  duration  of  the  period  of  protection  is  ten  years  from 
the  date  of  registration.  The  protection  may  be  renewed  re- 
peatedly for  another  period  of  ten  years. 


DENMARK  159 

Who  May  Register. 

Any  person  who  carries  on  in  this  country  a  manufacture  or 
handicraft,  agriculture,  mining,  commerce,  or  other  trade  may, 
besides  the  right  he  has  of  using  as  a  trade-mark  his  name 
or  firm  name  or  the  name  of  some  real  property  belonging  to  him, 
acquires  by  registration  in  conformity  with  the  provisions  of  this 
law  the  sole  right  to  the  use  of  special  trade-marks,  in  order  to 
distinguish  in  general  sale  his  goods  from  those  of  other  people. 
This  right  shall  include  all  kinds  of  goods,  when  in  the  regis- 
tration it  has  not  been  confined  to  certain  kinds  of  goods. 

Not  Registrable. 

A  trade-mark  cannot  be  registered  if  it  consists  exclusively 
of  numbers,  letters,  or  words,  which  have  not  such  a  distinctive 
form  that  the  mark  can  be  regarded  as  characteristic.  However, 
the  registration  shall  not  be  refused  when  the  mark  consists 
of  words  that  may  be  considered  as  a  specially  invented  desig- 
nation for  certain  goods  to  be  stated  in  the  application  in  ac- 
cordance with  Section  3  provided  the  said  designation  is  not 
intended  to  indicate  the  origin,  the  nature,  the  purpose,  the 
quantity,  or  the  price  of  the  said  goods  (Law  of  Dec.  19,  1898)  ; 
or 

If  it  without  warrant  contains  any  other  name  or  any  other 
firm  name  than  that  of  the  applicant,  or  the  name  of  the  real  prop- 
erty of  any  other  person ;  or 

If  it  contains  public  coats  of  arms  or  marks ;  or 
If  it  contains  representations  which  might  cause  public  scan- 
dal; or 

If  it  is  completely  similar  to  a  trade-mark  which  has  been 
already  registered  for  another  person,  or  for  which  due  applica- 
tion has  been  made  for  registration  for  another  person,  or  which 
shows  such  a  similarity  to  the  same  that  the  marks  in  their  en- 
tirety, notwithstanding  difference  in  details,  may  easily  be  con- 
founded ;  registration  shall,  however,  not  be  refused  if  the  simi- 
larity depends  upon  such  signs  as  are  mentioned  in  Section  7, 
or  if  the  marks  refer  to  different  kinds  of  goods. 

(If  a  registered  trade-mark  contains  numbers,  letters, 
or  words  which,  according  to  Sec.  4,  cannot  be  separately 
•registered  (Law  of  Dec.  19,  1898),  or  if  it  consists  wholly 
or  partly  of  such  signs  or  marks,  as  are  in  general  use  in 
particular  industries,  other  people  are  not  excluded  by  its 
registration  from  using  the  same  signs  as  a  trade-mark  or  a 
part  thereof. — Section  7.) 

Mode  of  Application. 

Anyone  who  wishes  a  trade-mark  registered  shall  deliver  to 
the  Registrar  or  send  to  him  in  a  paid  letter  an  application  in 


160  DENMARK 

writing,  containing  a  clear  description  of  the  mark  and  com- 
plete information  respecting  the  applicant's  name  or  firm,  trade 
and  postal  address,  and  also,  in  case  the  right  to  the  trade- 
mark shall  only  include  certain  kinds  of  goods,  a  specification  of 
such  goods. 

The  application  should  be  accompanied  by : 

1.  A  drawing  on  durable  paper  of  the  trade-mark  in  triplicate 
of  a  length  not  exceeding  15  cm.   (5.74  inches)   and  a  breadth 
not  exceeding  10  cm.  (3.82  inches.) 

2.  Two   blocks   or   casts   of   the    same    size   suitable    for   the 
printing  of  the  mark. 

3.  A  fee  of  40  krories  for  the  registration  and  its  publication. 
The  Registrar  shall  as  soon  as  possible  deliver  to  the  applicant, 
or  when  the  proper  address  has  been  given,  send  by  post,  an 
acknowledgment   in   writing   of   the   receipt   of   the    application 
as  well  as  the  date  and  hour  thereof.     To  the  acknowledgment 
shall  be  attached  one  of  the  delivered  copies  of  the  trade-mark. 
(Sec.  3.) 

The  examination  of  the  application  in  the  office,  comprises 
a  search  among  the  records  for  similar  marks  and  an  examina- 
tion of  the  mark  itself  for  the  purpose  of  determining  whether 
it  is  open  to  any  legal  objection. 

If  the  office  finds  that  the  application  cannot  be  accepted  as 
filed,  the  applicant  is  invited  to  remove  the  objection. 

When  no  objections  are  found  to  the  registration  of  the  mark, 
the  case  is  allowed  and  the  mark  registered,  whereupon  it  is 
published  in  the  Official  Journal. 

Upon  request,  a  special  certificate  of  registration  is  issued 
upon  payment  of  a  fee  of  two  Danish  crowns. 

If  the  registration  is  rejected  a  notice  to  that  effect,  stating 
the  reasons  of  refusal,  will  be  sent  to  the  agent  of  the  applicant 
by  letter. 

Within  two  months  from  the  date  of  such  notice  the  appli- 
cant may  enter  appeal  against  the  decision  to  the  Home  Ministry ; 
this  step,  however,  not  curtailing  his  right  to  have  the  decision 
tried  before  the  courts. 

Requirements. 

Certified  copy  of  home  registration ;  legalized  power  of  at- 
torney (see  form  No.  8  B.  Singer's  Book  of  Forms)  ;  three 
copies  of  the  mark ;  two  electrotypes  or  wood  cuts. 

Renewal. 

Protection  for  a  registered  trade  mark  ceases  when  applica- 
tion for  renewal  does  not  take  place  for  the  first  time  within  ten 
years  from  the  date  of  registration,  and  afterwards  within  ten 
years  from  the  last  renewal. 


DENMARK  161 

At  least  three  months  before  the  expiration  of  the  before 
mentioned  terms,  the  Registrar  shall  by  registered  letter  inform 
the  owner  of  the  mark  or  his  representative,  that  protection  for 
the  trade  mark  will  cease,  if  notification  of  nenewal  does  not  take 
place  in  due  time.  Such  letter  shall  be  sent  to  the  address  in 
Denmark,  which  has  been  given  by  the  party  concerned. 

If  any  person  wishes  to  renew  the  registration,  he  shall  de- 
liver, or  send,  in  an  application  in  writing  drawn  up  in  con- 
formity with  Sec.  3,  accompanied  by  such  a  drawing  as  is 
therein  prescribed,  and  ten  Krones,  registration  fee.  If  the 
mark  has  been  registered  for  some  other  person  than  the  one 
who  demands  the  renewal,  the  right  of  the  applicant  to  the  mark 
shall  also  be  proved. 

The  renewal  shall  be  entered  in  the  register  as  soon  as  possible, 
and  such  an  acknowledgment  as  is  prescribed  in  Sec.  3  with 
regard  to  application  for  registration  of  a  new  mark  shall  be 
communicated  to  the  applicant. 

If  the  Registrar  finds  the  application  defective,  he  shall  refuse 
the  renewal;  as  regards  notification  of  the  refusal  which  has 
taken  place  and  complaint  about  the  same,  the  provisions  in 
Sec.  5  shall  apply.  (Sec.  9.) 

(Sec.  5.  If  the  registration  is  refused,  notice  thereof  and  also 
the  reason  for  the  refusal  shall,  conformably  to  Section  3,  be 
sent  in  writing  to  the  applicant.  If  the  applicant  considers  the 
refusal  unwarranted,  he  may  within  two  months  thereafter  send 
in  the  decision  of  the  Registrar  to  the  Home  Secretary,  which 
proceeding,  however,  does  not  limit  the  right  of  the  applicant  to 
have  the  question  decided  by  legal  proceedings.) 

Offenses  and  Penalties. 

Whoever  sells  or  offers  for  sale  goods,  which  are  to  be  con- 
sumed or  re-sold  in  this  country,  on  the  labels  or  packing  of 
which,  either  here  or  abroad,  a  description  is  affixed  which  either 
contains  an  incorrect  statement  as  to  the  place  of  production  of 
the  goods,  the  nature,  material,  or  method  of  produc- 
tion, or  is  of  a  nature  to  produce  an  erroneous  con- 
ception in  any  of  the  said  respects ;  or  falsely  states  that  the 
goods  have  been  awarded  prizes  at  exhibitions  or  have  received 
certificates  or  recommendations  from  authorities  or  falsely 
states  that  the  goods  are,  or  have  been,  an  object  of  a  Danish 
patent,  unless  the  statement  was  correct  when  the  description 
was  affixed,  shall  be  fined  50  to  2,000  Kr.  In  case  of  repetition 
the  punishment  may,  under  aggravating  circumstances,  be 
changed  to  simple  imprisonment. 

Whoever,  however,  can  satisfactorily  prove  ignorance  of  the 
incorrectness  of  the  label,  or  that  everything  possible  has  been 

11 


162  DENMARK 

done  in  order  to  ascertain  the  correctness  of  same,  is  exempt 
from  punishment. 

Further,  whoever  can  prove  that  the  goods  have  been  received 
from  some  other  person,  living  in  Denmark,  is  exempt  from 
punishment,  unless  at  the  time  of  receiving  the  goods  there  is 
evidence  that  the  receiver  was  aware  that  a  false  description  had 
been  applied,  or  that  with  full  knowledge  of  the  fact  the  goods 
have  been  sold  or  offered  for  sale  for  consumption  or  re-sale  in 
the  country. 

Whoever  has  sold  goods  for  consumption  or  for  re-sale  in  Den- 
mark, the  labels  or  covers  of  which  contain  any  of  the  above 
named  incorrect  descriptions,  shall,  when  the  purchaser  has  not 
been  advised  of  same  at  the  time  of  the  transaction,  be  liable  to 
take  the  goods  back  and  refund  the  purchase  money,  and  at  the 
same  time,  provided  a  fine  or  punishment  in  accordance  with  the 
before  named  stipulations  has  been  inflicted,  compensate  the 
purchaser  for  any  loss  caused  to  him  under  the  transaction, 
according  to  the  ordinary  rules  of  legislation.  (Sec.  1.) 

Whoever  has  been  punished  according  to  Section  1  shall,  pro- 
vided the  goods  offered  are  still  in  his  possession  or  at  his  dis- 
posal, at  the  same  time  be  bound  to  remove  or  correct  the  false 
description  by  affixing  a  distinct  and  durable  supplementary  de- 
scription, or,  if  he  desires  to  do  so,  export  them,  provided  that 
the  goods  have  not  been  produced  in  this  country.  (Sec.  2.) 

The  provisions  in  Sec.  1,  regarding  the  use  of  indications  on 
goods  containing  a  wrongful  description  as  to  the  place  of  pro- 
duction of  the  goods  (incorrect  name  of  place),  shall  not  apply 
when  the  indication  in  question,  according  to  the  general  under- 
standing or  custom  in  the  trade,  has  become  an  indication  of  the 
nature  of  the  goods  and  the  method  of  production,  etc.,  and  not 
the  place  of  production. 

A  description  consisting  of  an  indication  of  money,  measure, 
or  weight,  is  not  considered  as  an  indication  of  the  place  of 
production  of  the  goods.  The  mere  fact  of  another  language 
being  used  than  that  of  the  country  in  which  the  goods  are  pro- 
duced, or  from  where  they  are  imported,  is  not  sufficient  to 
stamp  the  description  as  a  false  indication  of  the  place  of  pro- 
duction of  the  goods,  the  decision  in  such  case  resting  as  well  on 
the  contents  of  the  notification. 

A  description,  which  in  itself  must  be  regarded  as  a  false 
indication  of  the  place  of  production  of  the  goods,  shall  not  be 
regarded  as  such,  when  a  distinct  and  durable  supplementary  de- 
scription has  been  affixed  giving  information  as  to  the  real  place 
of  production  of  the  goods.  (Sec.  3.) 

The  same  punishment  as  stipulated  in  Sec.  1  applies  to  who- 
ever exports  or  conveys  in  transit  butter  which  is  not  produced 
in  Denmark,  when  a  notification  is  affixed  to  the  butter  or  its 
packing  which  either  states  that  the  butter  is  produced  in  Den- 


DENMARK  163 

mark,  or  contains  the  name  of  a  Danish  place ;  whoever  can  satis- 
factorily prove  to  have  been  ignorant  of  the  false  indication,  and 
to  have  applied  reasonable  care  in  order  to  ascertain  its  cor- 
rectness, is  exempt  from  punishment.  Butter  which  is  offered 
for  export  or  transit,  which  does  not  comply  with  the  above 
named  provisions  will  be  seized  and  restored  to  the  owner  only 
after  the  incorrect  description  has  been  removed  or  corrected  by 
an  equally  distinct  and  durable  supplementary  description,  and 
after  all  expenses  in  connection  with  the  seizure  have  been  paid. 

When  a  description  as  mentioned  in  the  first  part  of  this 
paragraph  is  affixed  to  butter  or  its  packing,  offered  for  export  or 
transit,  this  fact  must  be  expressly  mentioned  in  the  specification 
sent  to  the  Custom  Authorities  under  a  fine  of  10  to  200  Kr. 
This  fine  may,  if  desired,  be  fixed  by  the  Custom  Authorities. 

When  butter  which  is  not  produced  in  Denmark  is  exported 
in  hermetically  closed  receptacles  packed  in  this  country,  it  is 
permitted  to  indicate  Denmark  or  a  place  in  Denmark  as  the 
packing  place,  in  which  case  it  is  not  necessary  to  notify  this  in 
the  specification  sent  to  the  Custom  Authorities. 

Regarding  the  control,  which  is  to  be  effected,  by  the  Custom 
Authorities  for  the  maintenance  of  the  provisions  of  this  section, 
further  instructions  will  be  issued  by  the  Custom  Authorities. 

Whoever  by  means  of  signs,  advertisements,  accounts,  invoices 
or  other  business  documents,  states  incorrectly  that  he  has  ob- 
tained awards  at  exhibitions  or  recommendations  or  certificates 
from  authorities  for  goods  produced  or  sold  by  him,  or  that  he 
is  owner  of  a  Danish  Patent  or  dealer  in  goods  which  are  pro- 
tected by  a  Danish  Patent,  will  be  punished  by  fines  not  exceed- 
ing 500  Kr.  (Sec.  5.) 

It  is  prohibited  in  Denmark  to  sell  or  offer  for  sale  goods  on 
which  or  on  the  labels  or  packings  of  which  the  mark  mentioned 
in  the  Geneva  Convention  of  August  22,  1864 — "The  Red  Cross" 
— is  affixed  or  a  ^corresponding  statement  or  denomination.  For 
violation  of  this  provision  fines  not  exceeding  100  Kr.  shall  be 
inflicted. 

The  same  penalty  shall  apply  to  the  illegal  use  of  the  above 
named  mark,  statement  or  denomination  on  signs,  advertise- 
ments, accounts,  invoices,  or  other  business  documents. 

The  above  provisions,  however,  do  not  apply  to  lawfully  reg- 
istered trade  marks  containing  the  Red  Cross;  renewal  of  the 
registration  of  such  trade  marks  cannot,  however,  take  place. 
(Sec.  6.) 

Convictions  under  this  law  shall  be  dealt  with  as  public  police 
cases  with  the  consultation  of  experts,  provided  the  case  should 
require  it,  and  always  whenever  it  is  claimed  by  the  accused. 

Civil  lawsuits  in  which  a  claim  has  been  made  in  accordance 
with  the  regulations  of  this  law,  are  treated  as  commercial 
cases. 


164  DENMARK 

The  provisions  of  this  law  shall  apply  only  when  more  severe 
punishment,  in  accordance  with  the  general  legislation,  is  not 
liable  to  be  inflicted.  (Sec.  7.) 

Assignments. 

A  trade  mark  when  registered  can  only  be  assigned  in  connec- 
tion with  the  good  will  of  the  business. 

Lazvs  in  Force  to  Prevent  the  Sale  or  Importation  of  Goods1 
Bearing  a  False  Indication  of  Origin. 

The  law  prohibits  the  sale  or  offering  for  sale  of  goods  bearing 
a  false  indication  of  origin.  The  law  also  prohibits  the  fraudu- 
lent application  of  a  trade  mark  registered  in  Denmark  or  of  a 
trade  name  to  goods  for  sale,  or  the  offering  for  sale  of  goods 
thus  marked.  Infringements  of  the  law  are  generally  treated  as 
public  police  matters  and  entail  public  prosecution.  Therefore 
no  expense  is  incurred  by  an  injured  party,  unless  he  claims 
damages,  in  which  case  a  private  prosecution  might  be  necessary. 
In  the  event  of  a  case  of  infringement  having  escaped  the  notice 
of  the  police  a  criminal  prosecution  would  be  commenced  imme- 
diately upon  receipt  of  a  notice  given  by  the  injured  party  or  by 
their  State's  Legation  or  Consular  Representative.  The  cost  of 
prosecution  would  be  considerably  less  than  in  the  United  States 
or  England. 

Marking  Goods:     "Indregistreret  Varemserke." 

Procedure  and  Appeal. 

Court  in  Copenhagen. 

The  suits  are  entered  at  the  Maritime  and  Commercial  Court. 
The  Court  consists  of  a  permanent  President,  Vice-President, 
four  commercial  and  nautical  men,  citizens  of  the  city  of  Copen- 
hagen ;  they  are  elected  for  a  period  of  four  or  five  years. 

In  trade  mark  cases  the  President  or  Vice-President  and  four 
of  the  commercial  members  sit.  If  the  suit  is  below  200  kroner 
only  two  of  the  commercial  members  are  needed,  and  if  the  de- 
fendant is  not  present  either  the  President  or  Vice-President  may 
pass  sentence  alone.  Before  the  suit  is  entered  at  the  court  the 
case  comes  up  before  the  Court  of  Conciliation,  consisting  of 
two  commercial  members.  If  a  settlement  cannot  be  made  the 
case  is  referred  to  the  court,  and  written  arguments  are  filed. 

After  the  preparation  of  the  case  the  trial  takes  place,  which 
is  held  orally.  The  court  renders  a  decision.  The  decision  ren- 
dered by  the  Maritime  and  Commercial  Court  may  be  appealed  to 
the  Supreme  Court  in  sixty  days. 


DENMARK  165 

Supreme  Court. 

The  Supreme  Court  has  its  seat  in  Copenhagen  and  it  consists 
of  Lord  Chief  Justice  and  twelve  associate  Justices.  Before  the 
Supreme  Court  both  parties  are  represented  by  lawyers  and  the 
entire  proceeding  is  oral.  All  suits  where  over  200  kroner  is 
involved  can  be  appealed  to  the  Supreme  Court. 

The  Police  Court. 

The  Police  Court  in  Copenhagen  consists  of  three  judges  who 
are  appointed  for  life.  In  all  cases  where  the  penalty  does  not 
exceed  a  fine  of  40  kroner  one  judge  may  pass  sentence. 

In  all  Police  Court  cases  the  suit  must  be  filed  with  the 
Director  of  Police,  who,  in  turn,  turns  over  the  investigation  to 
the  police.  The  police  make  an  examination  and  report  to  the 
Director.  If  the  complaint  is  well  founded  the  Director  sends 
the  case  to  the  Criminal  and  Police  Court.  One  judge  conducts 
the  examination  of  the  case  until  the  records  are  closed.  If  the 
complaint  is  groundless  the  Director  may  dismiss  the  case.  Apr 
peal  may  be  taken  from  the  Director  to  the  Minister  of  Justice, 
whose  decision  is  final. 

Priority  of  Use. 

By  recent  amendment  to  the  law  providing  for  the  registration 
of  trade  marks  in  Denmark,  a  provision  has  been  added  to  the 
effect,  that  where  registration  of  a  trade  mark  has  been  refused 
upon  the  ground  that  the  mark  in  question  has  already  been 
registered  in  the  name  of  another  party,  an  application  may  be 
made  to  the  court  by  the  party  aggrieved,  and  if,  upon  such 
application,  he  can  show  that  he  was  the  first  user  of  the  mark, 
which  has  been  wrongfully  appropriated  by  the  other  party,  a 
decree  may  be  made  directing  registration  of  the  mark  in  the 
name  of  the  applicant  and  awarding  to  him  its  exclusive  use  in 
the  same  manner  in  which  he  was  entitled  to  the  use  thereof  at 
the  time  the  mark  was  registered  by  the  other  party.  Such  pro- 
ceedings, however,  must  be  begun  within  one  year  after  the  first 
registration  of  the  mark  has  been  announced  in  the  Trade  Mark 
Journal. 

DECISIONS. 

Words  and  Design  Trade  Marks. 

Under  date  of  August  10,  1906,  the  Commercial  Court  of 
Copenhagen,  announced  the  principle  that  a  word  trade  mark, 
associated  with  a  design,  could  not  be  safely  infringed  by  the 
use  of  the  word  alone  or  in  combination  with  a  different  design. 
The  earlier  trade  mark  consisted  of  the  word,  "Diamant,"  in  con- 
nection with  other  words,  descriptive  of  the  qualities  of  the  pe- 
troleum to  which  it  was  applied,  and  associated  with  a  design 


166  DENMARK 

made  up  of  the  representation  of  divergent  rays  of  light  about  a 
black  central  background.  The  later  mark  contained  the  word 
"Diamant"  in  connection  with  the  representation  of  a  polished 
diamond.  It  was  contended  by  the  owner  of  the  latter  mark  that 
by  the  use  of  the  word,  in  connection  with  the  design,  and  the 
registration  thereof  in  that  form,  the  earlier  user  had  constituted 
the  entire  combination  as  his  trade  mark  and  could  not  therefore, 
object  to  the  use  of  the  word  in  an  entirely  different  combina- 
tion. It  was  held,  however,  that  the  law  .made  no  such  distinction 
and  that  the  earlier  mark  was  entitled  to  protection  against  the 
use  of  that  last  registered.  (Mitteilungen  vom  Verband 
deutscher  Patentanwaelte,  1907,  p.  16.) 

The  Rights  of  a  Foreigner. 

The  Maritime  and  Commercial  Court  of  Copenhagen  has  con- 
strued the  provision  of  the  Danish  law  that  the  mark  of  a  for- 
eigner shall  not  be  protected  in  Denmark  for  a  longer  time  nor 
in  a  greater  degree  than  it  is  protected  in  his  native  country  by 
the  law  of  the  latter.  One  of  the  sections  of  the  Danish  law  of 
trade  marks  provides  that  a  judgment  of  a  competent  court  may 
be  obtained  authorizing  the  registration  of  a  trade  mark  in  Den- 
rflark  in  spite  of  the  previous  registration  of  the  same  mark  by 
another,  where  it  is  made  to  appear  that  the  earlier  registration 
was  wrongful.  The  question  at  issue  was  whether  a  citizen  of 
Germany,  whose  trade  mark  law  embodied  no  such  remedy,  could 
invoke  the  privilege  of  this  section  before  the  Danish  courts.  It 
will  be  remembered  that  in  Germany  the  registration  of  a  trade 
mark  is  conclusive  of  title,  and  that  the  right  of  the  registrant 
is  not  subject  to  be  questioned  thereafter.  The  decision  holds 
that  a  German  may  avail  himself  in  Denmark  of  the  advantage 
of  this  section  and  assert  under  it  his  right  to  registration  of  the 
mark  over  that  of  a  prior  registrant,  and  this  in  spite  of  the  fact 
that  the  law  of  his  own  country  awards  to  the  German  no  such 
advantage.  The  court  holds  that  the  provisions  of  the  Inter- 
national Convention  are  satisfied  only  when  each  country  extends 
to  the  citizens  of  any  other  country  in  the  Union,  the  same  pro- 
tection and  the  like  remedies  as  it  extends  to  its  own  citizens. 
(La  Propriete  Industrielle,  1907,  p.  39.) 

The  International  Convention. 

In  a  decision  of  the  Mercantile  and  Commercial  Court  of 
Copenhagen  upon  the  right  of  a  foreigner  to  register  a  word 
trade  mark  in  Denmark,  the  point  involved  being  whether  or  not 
a  word  trade  mark  not  entitled  under  the  provisions  of  the 
Danish  law  to  be  registered  in  that  country,  might  be  there 
registered  by  a  foreigner,  a  citizen  of  one  of  the  countries  to  the 
International  Convention,  who  had  himself  registered  the  mark 


DENMARK  167 

in.  his  own  country.  The  mark  applied  for  was  the  word  "Pri- 
mus," which  had  formerly  been  registered  by  the  applicants,  a 
Swedish  firm,  in  their  own  country.  The  Registrar  refused  regis- 
tration, on  the  ground  of  the  descriptive  character  of  the  mark.  On 
appeal,  the  Mercantile  and  Commercial  Court  held  that  the  mark 
should,  under  the  circumstances  of  the  case,  be  registered.  The 
Supreme  Court  has  now  overruled  that  decision,  holding, 

"That  the  fact  that  a  word  mark  has  been  registered  in  a 
foreign  country  belonging  to  the  International  Convention, 
does  not  give  the  owner  of  it  the  right  to  demand  that  the 
same  mark  be  registered  in  Denmark  without  regard  to  the 
meaning  and  contents  of  the  said  word." 

In  other  words,  it  would  appear  that  so  far  as  word  trade 
marks  are  concerned,  they  must  conform  with  the  requirements 
of  the  Danish  law  in  order  to  be  registered  in  Denmark,  irre- 
spective of  the  view  which  any  foreign  country  may  take  as  to 
their  registrability. 

Unfair  Competition. 

The  Supreme  Court  of  Copenhagen  has  held  that  one  Matell, 
registered,  and  trading  under  the  trade  name  "Matell  &  Co.,"  and 
who  has  placed  upon  the  market  cognac  in  bottles  with  labels 
very  similar  to  those  in  use  by  the  older  house  of  Martell  &  Co., 
whose  labels  have  been  registered  in  Denmark  under  the  trade 
mark  registration  law,  is  liable  for  infringement  of  the  trade 
mark  in  question.  The  word  "cognac,"  however,  is  nothing 
more  than  a  generic  designation  of  the  article  and  no  longer  has 
the  significance  of  a  geographical  term,  and  its  use  by  the  de- 
fendant was  not,  therefore,  wrongful.  (Martell  &  Co.  vs.  Matell, 
Annales  de  la  Prop.,  Ind.,  1908,  p.  77.) 


By  a  judgment  of  the  Supreme  Court  of  Copenhagen  in  Sep- 
tember, 1908,  it  was  determined  that  the  words  "Swift's  impe- 
rial extra  family  beef"  could  not  be  registered  in  Denmark,  upon 
the  application  of  a  German  firm,  notwithstanding  its  registration 
in  Germany.  The  words  merely  indicate  the  origin  and  nature 
of  the  goods  and  are  not  registrable  under  the  Danish  law,  which 
permits  the  registration  of  word  trade  marks,  only  when  they 
are  invented  words,  or  are  printed  in  such  distinctive  form  as  to 
be  considered  figurative  marks. 

Registration  of  the  mark  was  claimed  under  the  provisions  of 
the  International  Convention  and  the  Commercial  Court  of  Co- 
penhagen, upon  appeal  from  the  Registrar,  had  decided  that  it  was 
not  so  registrable,  but  this  decision  was  overruled  by  the  Su- 
preme Court  of  Copenhagen,  in  the  decision  above  cited.  (Hol- 
tennielsen  vs.  Swift  Packing  Co.,  Journal  du  Droit  Int.  Prive., 
1909,  p.  1185.) 


i68  DENMARK 

A  very  late  decision  of  the  Maritime  and  Commercial  Court  of 
Copenhagen,  now  affirmed  by  the  Supreme  Court  of  Denmark, 
raises  a  novel  point  regarding  the  protection  of  trade  marks.  The 
word  "taxamotor"  was  registered  as  a  trade  mark  by  a  Copen- 
hagen firm,  which  made  use  of  it  upon  carriages  that  were  kept 
by  it  for  hire.  Another  firm  put  upon  its  carriages  the  word 
"taxameter,"  and  a  suit  was  instituted  by  the  former  firm  for  in- 
fringement of  its  trade  mark.  The  latter  firm  contended  that  a 
Danish  trade  mark  only  covered  the  use  of  the  mark  on  goods 
offered  for  sale,  but  the  court  named  held,  that  the  words  "of- 
fered for  sale"  in  the  trade  mark  act  also  covered  the  offering  of 
the  goods  for  hire,  and  that  the  offense  complained  of  was  an 
infringement  of  the  registered  trade  mark. 

Trade  Mark  Infringements. 

The  report  of  a  decision  of  the  Supreme  Court  of  Denmark, 
in  a  prosecution  for  trade  mark  infringement,  illustrates  the 
character  of  the  remedies  available  in  that  country  in  such  cases, 
as  well  as  the  facts  upon  which  such  prosecutions  may  be  main- 
tained. 

A  German  firm,  a  prominent  part  of  whose  name  was  the 
word  and  initials  "J.  A.  John,"  had  registered  in  that  country 
the  word  "Volldampf"  for  washing  machines.  The  defendant 
sold  the  washing  machines  manufactured  by  the  German  firm  in 
Denmark  under  this  trade  mark.  After  handling  the  machines 
for  some  two  or  three  years,  he  organized  a  joint  stock  com- 
pany under  the  name  of  "John,"  most  of  the  capital  stock  in 
which  belonged  to  him  and  of  which  he  was  the  director  and 
manager.  The  company  thereupon  took  over  his  business  in  the 
sale  of  washing  machines  and  began  to  sell  a  machine  made  in 
Copenhagen  and  similar  to  the  German  product.  These  ma- 
chines were  marked  with  a  metal  plate,  bearing  the  trade  mark 
"Dansk  Fuldamp"  and  the  name  of  the  maker  "John"  in  raised 
letters. 

The  German  manufacturer  complained  both  of  the  trade  mark, 
which  it  was  alleged  might  easily  be  mistaken  for  his  own,  and 
of  the  firm  name  "John"  adopted  and  used  by  the  defendant. 
The  defendant  contended  that  as  he  used  the  adjective  "Dansk" 
or  "Danish"  before  his  trade  mark,  all  possibility  of  deception 
was  destroyed.  In  choosing  the  name  of  his  joint  stock  com- 
pany, the  defendant  claimed  he  had  acted  without  any  intention 
of  imitating  the  name  of  the  German  firm,  but  had  selected  the 
name  because  it  was  the  one  by  which  he  was  called  among  his 
family  and  friends.  The  court,  however,  took  the  view  that  con- 
sidering the  identity  in  meaning  of  the  two  marks,  in  the  German 
and  Danish  languages  respectively,  the  similarity  between  them 
was  such  as  to  create  a  likelihood  of  confusion.  Nor  was  the  de- 
fendant justified  in  making  use  of  the  name -"John"  as  that  of  his 


DOMINICAN  REPUBLIC  169 

corporation,  when  he  knew  that  it  was  a  part  of  the  firm  name  in 
use  by  the  German  house. 

The  defendant  was  condemned  to  pay  a  heavy  fine  and  to 
destroy  the  illegal  marks  in  his  possession.  He  was  also  given 
fourteen  days  within  which  to  comply  with  the  injunction, 
against  further  dealing  in  the  machines  bearing  the  infringing 
mark.  (Shornstein,  etc.  Fabrik,  J.  A.  John  vs.  Johan  Peter 
Sorensen,  No.  233,  1910.) 

The  Maritime  and  Commercial  Court  of  Copenhagen  has  ren- 
dered a  judgment  upholding  the  validity  of  the  trade  mark 
"Grammophon"  and  enjoining  its  use  in  trespass  upon  the  rights 
of  the  registered  owner  of  the  trade  mark.  The  court  considered 
the  word  distinctively  an  invented  term,  applied  originally  to 
goods  of  a  particular  kind,  made  under  the  inventor's  patent,  and 
the  fact  that  the  public  applied  the  name  to  other  and  similar 
apparatus,  put  on  the  market  at  a  later  date  by  other  manufac- 
turers, cannot  cause  the  word  to  be  regarded  in  the  law  as  a 
generic  name  for  that  class  of  goods.  The  registration  was, 
therefore,  held  to  be  valid  and  the  use  by  the  defendant  of  the 
word  in  its  trade  name  was  enjoined,  under  Sec.  10  of  the  law  of 
trade  names,  which  provides  that  a  trading  style  may  not  con- 
tain any  reference  to  undertakings  not  connected  with  the  actual 
business  carried  on.  It  was,  therefore,  held  that  the  defendants 
were  not  entitled  to  use  the  name  "Grammophon"  in  their  trade 
name,  nor  to  indicate  under  that  name  any  goods  handled  by 
them  not  of  the  plaintiff's  manufacture.  (Int.  Assn.  for  the  Prot. 
of  Ind.  Prop.,  Vol.  13,  p.  157.) 


DOMINICAN  REPUBLIC  OR 
SANTO  DOMINGO 

This  Republic  is  situated  on  the  eastern  coast  of  the  island  of 
Hayti.  It  has  an  area  of  about  18,000  square  miles,  and  a  popu- 
lation of  about  600,000.  The  capital  is  St.  Domingo.  The  rail- 
ways are  one  between  Santiago  and  Pto.  Plata,  the  other  be- 
tween Sanchez  and  La  Vega. 

The  principal  articles  exported  are  tobacco,  sugar,  coffee,  cocoa, 
honey  and  wax,  hides,  bananas,  mahogany  and  dyewood.  The 
importations  from  Great  Britain  consist  of  cotton  goods,  linens, 
hosiery,  woolens,  cutlery,  earthenware,  hardware,  East  India 
rice,  malt  liquors,  and  recently,  railway  materials. 

MONEY,  WEIGHTS  AND  MEASURES — The  law  in   force  estab- 
cents=4s.  2d. 
lishes  the  American  gold  dollar  as  the  standard  of  value=100 

For  weights  and  measures  the  metrical  system  has  been 
adopted. 


170  DOMINICAN  REPUBLIC 

Law, 
Law :  May  16,  1907. 

Duration. 

The  registration  of  a  mark  shall  be  valid  for  all  goods  for 
twenty  years,  at  the  termination  of  which  it  may  be  renewed, 
and  so  on  successively.  The  registration  shall  be  considered  null 
and  void  should  the  owner  of  the  registered  mark  make  no  use  of 
it  within  a  period  of  one  year.  (Art.  8.) 

What  May  Be  Registered. 

Trade  marks  may  be  made  up  of  anything-  not  prohibited  by 
this  law  and  which  may  distinguish  certain  articles  from  others 
identical  or  similar  but  of  different  origin.  Any  name,  signature 
or  firm,  letters  or  symbols  may  serve  for  this  purpose  only  if  used 
in  a  distinctive  form.  Trade  marks  may  be  used  on  the  articles 
themselves  or  on  the  wrappings  or  packages  which  may  contain 
them.  (Art.  2.) 

Not  Registrable. 

Registration  shall  be  forbidden  of  such  marks  as  contain: 
First.  The  coat  of  arms,  medals,  or  insignia,  either  public,  offi- 
cial, national,  or  foreign,  except  in  the  case  of  its  due  authoriza- 
tion previous  to  the  passage  of  this  law.  Second.  A  name  or 
firm  that  the  petitioner  may  not  use  legally.  Third.  The  indica- 
tion of  a  determinate  locality  or  establishment  which  is  not  that 
of  the  origin  of  the  article,  even  though  to  such  indication  there 
be  added,  or  not  a  fictitious  name  or  that  of  another.  Fourth. 
Words,  pictures  or  figures  which  involve  offense  to  individuals 
or  to  public  decorum.  Fifth.  The  reproduction  of  any  other 
mark  already  registered  for  an  article  of  the  same  kind.  Sixth. 
The  entire  or  partial  imitation  of  a  mark  already  registered  for  a 
product  of  the  same  kind,  which  might  lead  the  consumer  into 
error  or  confusion.  The  possibility  of  error  or  confusion  shall 
be  considered  as  such  whenever  the  differences  between  two 
marks  can  not  be  recognized,  without  due  examination  or  com- 
parison, in  which  event  it  is  to  be  subject  to  the  decision  of  the 
Minister  of  Improvements  and  Public  Works,  assisted  by  the 
members  of  the  council.  (Art.  6.) 

Mode  of  Application. 

In  order  to  effect  the  registration  it  will  be  necessary  that  the 
person  interested  or  his  legal  representative,  apply  to  the  Min- 
ister of  Improvements  and  Public  Works,  application  being 
made  on  properly  stamped  paper  and  accompanied  by  two  or 
more  copies  or  facsimiles  of  the  trade  mark,  which  must  con- 
tain a  detailed  exposition  of  what  constitutes  the  mark.  The  ap- 
plication should  contain  further  a  declaration  of  the  kind  of  in- 


DOMINICAN  REPUBLIC  171 

dustry  or  business  to  which  it  is  assigned  for  use,  the  vocation  of 
the  petitioner,  and  his  place  of  residence.     (Art.  4.) 

The  Chief  Clerk  of  the  Ministry  of  Improvements  and  Public 
Works  shall  certify  each  one  of  the  models  or  copies,  the  day  and 
hour  upon  which  they  are  received,  and,  in  case  of  the  registra- 
tion being  ordered,  will  deposit  one  of  said  copies  in  the  archives 
of  the  ministry  and  will  deliver  one  to  the  interested  person  to- 
gether with  the  certificate  of  registration  duly  numbered.  There 
shall  be  published  in  the  Gaceta  Oficial  the  certificate  of  registra- 
tion which  shall  contain  the  characteristic  features  of  the  trade 
mark,  copied  from  the  declaration  required  by  Art.  4  (Art.  5,) 

Assignments. 

The  mark  can  only  be  transferred  with  the  industry  of  the 
product  or  the  business  for  which  it  was  adopted,  due  annotation 
being  made  in  the  registration,  in  consideration  of  authentic 
documents.  A  like  annotation  shall  be  made,  if,  once  the  firms 
changed,  the  trade  mark  should  still  exist.  In  both  cases  the 
publication  of  the  same  shall  be  necessary.  (Art.  9.) 

Infringement  and  Penalties. 

A  fine  of  $100,  gold,  to  be  turned  into  the  Treasury,  shall  be 
imposed  upon :  First,  anyone  who  uses  the  legal  mark  of  another 
person.  Second,  anyone  who  reproduces,  in  its  entirety  or  in 
part,  in  any  way  whatsoever,  and  without  the  consent  of  the 
owner  or  of  his  legal  representative,  any  registered  and  published 
trade  mark.  Third,  anyone  who  imitates  a  trade  mark  in  such  a 
way  as  to  deceive  the  consumer.  Fourth,  anyone  who  uses  such 
imitated  mark.  Fifth,  anyone  who  sells  or  offers  for  sale  articles 
which  display  an  imitated  trade  mark,  provided  that  he  cannot 
justify  the  manner  of  its  derivation.  Sixth,  anyone  who  makes 
use  in  his  products  of  a  commercial  name  or  that  of  a  firm 
which  does  not  belong  to  him,  whether  it  constitutes  or  not  a 
part  of  a  registered  mark.  To  determine  such  imitation  as  is 
alluded  to  in  numbers  4  to  G  inclusive,  of  this  article,  it  is  not 
necessary  that  the  similarity  of  the  mark  be  complete ;  it  will  be 
sufficient  that  there  be  a  possibility  of  error  or  confusion,  in 
accordance  with  the  exposition  of  number  6  of  Art.  8.  Usurpa- 
tion of  a  commercial  name  or  that  of  a  firm,  treated  in  number  6 
of  the  present  article,  will  be  considered  as  existing  whether  the 
reproduction  be  complete  or  whether  there  be  omissions,  addi- 
tions, or  alterations,  provided  that  there  exist  the  same  possibility 
of  error  or  confusion  on  the  part  of  the  consumer.  (Art.  10.) 

A  fine  of  $50,  gold,  to  be  turned  into  the  Treasury,  shall  be 
imposed  upon:  First,  anyone  who,  without  due  authorization, 
shall  use  on  a  trade  mark  the  coat-of-arms,  genealogical  insignia 
or  insignia  of  a  public  official,  national  or  foreign  character ; 
second,  anyone  who  shall  use  trade  marks  which  offend  public 
decorum;  third,  anyone  who  shall  use  trade  marks  with  indica- 


172  DUTCH  EAST  INDIES 

tions  of  a  locality  or  establishment  not  that  of  the  place  whence 
comes  the  merchandise  or  product,  whether  to  this  indication  is 
united  or  not  the  name  of  another  or  a  fictitious  one;  fourth, 
anyone  who  sells  or  offers  for  sale  any  article  or  merchandise  or 
product  which  may  bear  marks  such  as  indicated  in  numbers  1,  2 
and  3  of  this  article,  provided  he  can  not  justify  the  manner  of 
its  derivation;  fifth,  anyone  who  shall  use  a  trade  mark  con- 
taining anything  personally  offensive  or  anyone  who  sells  or 
offers  for  sale  articles  which  display  such  marks.  (Art.  11.) 
Marking  Goods:  "Marca  Registrada." 

Comment  on  the  Trade  Mark  Law. 

The  Dominican  Republic  has  put  in  effect  a  trade  mark  law, 
the  first  that  this  country  has  had  for  the  protection  of  this 
species  of  property.  Although  the  country  has  been  a  member  of 
the  International  Union  for  the  Protection  of  Industrial  Property 
since  1890,  and  although  its  constitution  recognizes  and  guar- 
antees property  rights  in  trade  marks,  there  has  been  no  law  for 
the  registration  of  marks  until  that  recently  enacted  and  which 
went  into  effect  on  May  16,  1907.  The  statute  now  enacted 
makes  the  title  to  a  trade  mark  dependent  entirely  upon  regis- 
tration, there  being  no  provision  in  it  for  recognizing  priority  of 
use  or  enforcing  the  rights  of  a  prior  user.  In  this  respect  the 
law  has  the  objectionable  feature  that  is  common  to  trade  mark 
laws  of  the  Spanish-American  countries. 

Restrictions  Upon  Proprietary  Remedies. 

Under  date  of  June  20,  1906,  the  statute  was  enacted  which 
became  operative  on  January  1,  1907.  This  law  provides  that 
pharmaceutical  preparations  coming  from  foreign  countries 
must  comply  with  certain  formalities,  and  obtain  a  grant  of  the 
privileges  of  sale  in  this  Republic.  An  application  for  this  pur- 
pose, with  specimens  of  the  medicines,  must  be  filed  with  the 
Superior  Council.  After  examination  a  report  is  made  to  the 
Superior  Council,  upon  which  authorization  to  sell  the  product 
will  be  either  granted  or  refused.  Of  this  decision,  the  custom 
house  officers  of  the  Republic  are  notified  and  preparations  not 
authorized  under  the  statute  will  be  forbidden  importation. 


DUTCH  EAST  INDIES 

JAVA 

The  area  of  Java  has  been  computed  to  be  51,100  square 
miles. 

The  population  of  Java  and  Madura  in  1900  was  28,746,688. 

The  principal  product  of  the  island  is  sugar  (1,046,691  tons 
in  1906). 


DUTCH  EAST  INDIES  173 

The  sugar  from  Java  was  exported  to  the  following  countries 
in  1905-6 :  Europe,  9,372  tons ;  U.  S.  of  America,  404,521  tons ; 
Australia,  17,959  tons;  China,  147,165  tons;  Japan,  129,198 
tons;  India,  86,267  tons;  other  countries,  93,443  tons.  Total, 
887,925  tons. 

The  tea  export  reached  27,517,615  pounds  in  1910.  The  culti- 
vation of  cocoa  is  gradually  extending.  Here  are  also  petroleum 
springs,  possessed  by  the  Dordrecht  Petroleum  Company;  one 
refinery  is  at  Sourabaya,  the  other  at  Samarang,  and  the  Com- 
pany has  now  erected  a  factory  at  Blora  for  the  preparation  of 
the  various  articles  produced  from  the  refuse,  such  as  paraffin, 
ceresine,  stearine,  candles,  etc.,  and  have  also  erected  a  second 
refinery  at  Samarang. 

The  following  are  the  principal  articles  .of  import :  Cotton  and 
woolen  goods,  haberdashery  and  mercury,  provisions,  earthen- 
ware, fish,  butter,  flour,  rice,  coals,  petroleum,  brandy,  gin,  wines, 
beer,  liquors  (spirits),  champagne,  mineral  waters  and  matches. 

The  principal  articles  of  export  are  sugar,  coffee,  rice,  arrack, 
rattans,  hides,  nutmegs,  tobacco,  indigo,  gum  damar,  kapok  india- 
rubber,  tea,  tin,  cinchona  bark,  quinine,  gutta-percha,  mace,  pep- 
per, coprah,  cocoa  and  tapioca. 

The  trade  in  mother-of-pearl  and  shells  is  considerable,  Macas- 
sar being  the  place  of  sale. 

The  monetary  unit  of  the  Dutch  East  Indies  is  the  Dutch 
florin=100  cents=ls.  8d.  (about)  40  cents  United  States. 

WEIGHTS  AND  MEASURES — The  metrical  system  is  in  force. 

Law. 

Law:  9th  of  November,  1893,  as  amended  by  the  Law  of  the 
31st  of  May,  1905.  This  law  applies  to  all  the  islands  of  the 
group.) 

Duration. 

Twenty  years;  may  be  renewed  before  the  expiration  of  the 
twenty  years  for  a  similar  term. 

Requirements  and  Mode  of  Application. 

Registration  must  be  applied  for  at  the  branch  office  of  the 
Industrial  Property  Office  at  Batavia. 

Power  of  attorney  (no  legalization).  One  power  can  be  used 
for  several  applications  filed  at  the  same  time.  When  the  power 
is  signed  "pro  procura,"  proof  must  be  shown  to  the  effect  that 
the  proxy  is  authorized  to  sign  for  this  purpose. 

Ten  copies  of  the  mark. 

Electrotype  measuring  in  length  and  width  not  under  1.5  cen- 
timetres and  not  exceeding  10  centimetres.  This  electrotype  is 


174  DUTCH  EAST  INDIES 

used  for  the  publication  of  the  registration  in  the  "Javasche  Cou- 
rant"  (Official  Gazette). 

Description  of  the  mark  and  a  statement  of  the  goods  for 
which  it  is  to  be  registered,  and  also  the  manner  in  which  the 
mark  is  used,  and  whether  a  claim  is  made  for  its  use  in  a  par- 
ticular color  or  colors.  When  such  claim  for  a  color  or  colors  is 
made,  twenty  copies  of  the  specimen  is  required. 

A  statement  of  the  full  name,  occupation  and  postoffice  ad- 
dress of  the  applicant  is  necessary. 

The  formalities  and  the  procedure,  etc.,  are  substantially  the 
same  as  in  Holland,  with  the  exception  that  in  Dutch  East  Indies 
an  appeal  from  the  refusal  by  the  Registrar  must  be  lodged 
within  a  period  of  three  months,  and  that  there  is  no  appeal  from 
the  decision  of  the  "Raad  van  Justitie"  to  a  higher  court. 

General  Information. 

Classes  of  goods,  which  necessitate  registration  in  each  class 
separately,  do  not  exist  in  Dutch  East  Indies.  It  is  therefore 
possible  to  register  a  mark  for  a  great  number  of  goods  by  one 
single  application,  but  it  is  advisable  to  divide  them  into  groups 
so  as  to  obtain  broad  protection.  The  mark  can  only  be  reg- 
istered in  respect  of  the  goods  for  which  it  is  practically  used, 
and  not  for  goods  which  the  applicant  intends  to  use  later  on.  If 
the  applicant's  name,  occupation  or  any  printed  matter  on  the 
mark  gives  rise  to  the  supposition  that  the  applicant  does  not 
deal  in  the  goods  mentioned  in  the  application,  the  Registrar  may 
refuse  registration  for  those  goods  that  do  not  fall  under  appli- 
cant's business. 

A  mark  composed  of  several  parts  may  be  protected  by  one 
single  registration. 

Assignments. 

For  registering  an  assignment  it  is  absolutely  necessary  that 
the  good  will  and  business  of  the  original  proprietor  of  the  trade 
mark  shall  also  be  assigned  to  the  subsequent  proprietor.  For 
assignment  the  following  documents  are  necessary : 

Power  of  attorney  (no  legalization). 

A  copy  of  the  assignment  of  the  business  of  the  proprietor.  This 
document  must  be  executed  before  a  notary  and  legalized  before 
a  Dutch  Consul ;  it  is  not  returned. 

A  certificate  of  transfer  is  also  published  in  the  official  papers. 

A  mere  change  in  the  name  of  proprietorship  can  only  be 
recorded  in  the  Trade  Marks  Register  by  payment  of  the  same 
government  fees  and  by  fulfilling  the  same  formalities  as  for 
assignments. 

Marking  Goods:    See  Holland. 


EAST  AFRICA  PROTECTORATE — ECUADOR  175 


EAST  AFRICA  PROTECTORATE 

The  British  East  Africa  Protectorate  is  bounded  on  the  north 
by  the  river  Juba  and  Abyssinia;  on  the  south  by  German  ter- 
ritory; and  on  the  west  by  the  Uganda  Protectorate,  the  eastern 
boundary  of  which  is  a  line  drawn  from  the  eastern  shore  of 
Lake  Victoria  to  Mount  Elgon,  and  from  thence  up  the  Turkwell 
River  to  Lake  Rudolph.  The  area  is  about  200,000  square  miles, 
with  an  estimated  population  of  4,000,000. 

MONEY,  WEIGHTS  AND  MEASURES — 1  rupee  (100  cents)  =32 
cents.  Weights  and  measures  same  as  Great  Britain,  with  the 
following  exception,  the  gisla  (measure  of  caffre  corn)  =360  Ibs. 
avoirdupois. 

Under  the  Inventions  and  Designs  Act  owners  of  British  trade 
marks  may  record  such  trade  marks  in  East  Africa  Protectorate 
at  the  office  of  the  Secretary  of  the  Board  of  Trade  at  Mombasa. 

Requirements. 

A  certified  copy  of  the  British  registration ;  four  copies  of  the 
trade  mark  and  power  of  attorney. 


ECUADOR 

The  Republic  of  Ecuador  is  bounded  on  the  north  by  Colombia, 
on  the  south  by  Peru,  on  the  west  by  the  Pacific  Ocean,  and  on 
the  east  by  Brazil.  It  has  an  area  of  116,000  English  square 
miles  and  a  population,  including  the  Indians,  of  1,370,250. 

The  industry  is  mostly  agricultural,  the  staple  products  being 
cocoa,  sugar,  coffee,  hides,  india  rubber  and  ivory  nuts.  The 
country  is  possessed  of  great  mineral  resources,  but  these  are 
undeveloped  and  the  means  of  transport  are  entirely  absent. 
Straw  hats  and  plait  are  largely  exported. 

MONEY,  WEIGHTS  AND  MEASURES — The  monetary  unit  em- 
ployed in  the  tariff  is  the  Sucre=100  centavos,  actual  value  about 
Is.  10d.=United  States  44  cents.  For  weights  and  measures, 
Ecuador  has  adopted  the  metrical  system. 

Law. 

Law  of  October  22,  1899 ;  October  9,  1901 ;  October  28,  1908, 
and  Presidential  Decrees  No.  2064  of  May  4,  1909. 

Duration. 

Registration  of  a  trade  mark  is  for  a  period  of  twenty  years 
from  the  date  of  application,  with  the  privilege  of  renewal  for  a 
similar  period  each  time  it  expires.  If  a  mark  is  not  used  on  the 
articles  for  which  it  is  registered  within  one  year  from  registra- 


176  ECUADOR 

tion,  or  if  its  use  ceases  for  one  year,  the  registration  will  lapse. 
In  the  case  of  foreign  marks,  use  abroad  complies  with  the  above 
provision. 

What  May  Be  Registered, 

Any  sign,  emblem,  word,  phrase,  or  special  and  characteristic 
designation  used  to  distinguish  articles  and  to  denote  their  origin. 

Unregistrable. 

Letters,  words,  names,  coats  of  arms,  emblems,  or  insignia 
used  by  the  nation  of  its  municipalities,  by  foreign  States  or 
cities ;  the  form  or  color  of  the  article ;  general  terms  or  expres- 
sions used  to  designate  an  article,  or  not  having  the  character  of 
novelty  in  relation  to  the  article  with  which  they  are  used ;  desig- 
nations generally  used  to  indicate  the  nature  of  the  article,  its 
class  or  quality ;  immoral  expressions  or  designs ;  the  name  of  a 
person,  natural  or  legal,  unless  presented  under  a  peculiar  and 
distinctive  form ;  a  trade  mark  already  registered  to  another,  or 
similar  to  it,  if  intended  for  articles  of  the  same  nature;  the  name 
or  portrait  of  a  person  without  his  consent,  or  that  of  his  heirs,  if 
he  be  deceased ;  a  geographical  name  if  it  constitutes  the  essential 
part  of  the  trade  mark.  (Art.  6.) 

Requirements. 

Power  of  attorney,  signed  before  two  witnesses  and  an  Ecuador 
Consul. 

Twenty  facsimiles,  of  the  mark. 

An  electrotype  of  the  mark,  the  length  and  breadth  of  which 
must  be  not  less  than  15  mm.  (5/8  in.)  nor  more  than  100  mm. 
(3  15/16  in.),  height  20  mm.  (13/16  in.)  to  30  mm.  (1  3/16  in.). 

A  receipt  proving  the  payment  of  the  prescribed  fee. 

A  consent  in  writing,  if  the  mark  consists  of  the  name  or  por- 
trait of  an  individual.  (Forms  may  be  obtained  from  B.  Singer's 
offices.) 

Opposition. 

Within  three  months  from  the  publication  of  the  application 
opposition  to  the  registration  may  be  entered  by  any  one  alleging 
that  the  trade  mark  belongs  to  him  by  reason  of  his  having  been 
the  first  to  make  public  and  notorious  use  of  same  within  the  five 
years  last  past,  or  that  the  mark  is  unregistrable  under  the  terms 
of  Article  6. 

Assignments. 

A  trade  mark  may  be  inherited  or  transferred.  It  can  only  be 
transferred  in  connection  with  the  industry  to  which  the  article 
for  which  it  is  intended  belongs ;  and  the  sale  of  the  industry,  in 
the  absence  of  a  contrary  stipulation,  includes  that  of  the  trade 


ECUADOR  177 

mark ;  a  transfer  of  a  registered  trade  mark  is  of  no  effect  unless 
inscribed  in  the  register. 

The  right  of  employing  the  registered  marks  is  deemed  per- 
sonal property. 

But  the  assignment  of  said  right  must  be  shown  by  an  instru- 
ment recorded  in  the  register. 

If  the  instrument  should  be  a  private  one  it  must  be  recognized 
as  such  before  the  registration  is  made. 

The  assignment  shall  be  published  in  the  official  periodical. 

If  any  of  these  requisites  should  be  lacking  the  assignment  will 
be  without  effect.  (Art.  12.) 

Infringements. 

The  civil  controversies  that  may  arise  by  reason  of  trade  marks 
will  be  settled  and  decided  upon  by  the  respective  judges. 

All  infringements  will  be  punished  according  to  the  penal 
code.  (Art.  10.) 

Penalties. 

Infringement  of  a  registered  trade  mark  may  be  punished  by  a 
fine  of  from  five  hundred  to  one  thousand  sucres,  and  imprison- 
ment from  six  months  to  one  year. 

(1)  Those  who  imitate  a  genuine  trade  mark. 

(2)  Those  who  sell  or  offer  for  sale,  buy  or  have  in  their 
possession,  imitated  trade  marks. 

(3)  Those  who  sell  or  offer  for  sale,  buy  or  have  in  their  pos- 
session, genuine  marks  without  the  consent  of  the  owner,  which  is 
the  presumption  where  there  is  protest  on  the  part  of  the  latter. 

(4)  Those  who  make  use  of  imitated  marks,  placing  them  on 
articles  which  they  make  or  on  merchandise  in  which  they  deal, 
which  is  the  presumption  against  him  who  has,  sells  or  offers  for 
sale  said  merchandise  thus  marked. 

(5)  They   who   sell   or   retail   merchandise  which   bears   an 
imitated  mark.    • 

(6)  They  who  use  on  the  articles  which  they  make  or  on  the 
merchandise  in  which  they  deal,  trade  marks  which  contain  false 
indications  in  regard  to  the  nature,  quantity,  quality,  origin  or 
source  of  either  one  or  the  other,  or  who  state  falsely  that  they 
have  been  awarded  orders,  medals,  diplomas  or  distinction  in  ex- 
positions or  in  any  other  manner. 

(7)  They  who,  without  imitating  a  mark,  detach  or  separate 
it  from  one  article  in  order  to  apply  it  to  another. 

(8)  They  who  place  their  name,  that  of  their  establishment, 
or  any  word  or  sign  upon  a  genuine  mark. 

(9)  Those  who  refill  with  spurious  products  receptacles  with 
a  trade  mark  belonging  to  another;  those  who  refill  them  with 
products  which  do  not  correspond  with  the  genuine  product  as 
stated  in  the  mark  borne  by  the  vessel;  they  who  mix  genuine 

12 


178  ECUADOR 

products  which  bear  genuine  marks  with  other  products  different 
or  spurious;  and  they  who  sell,  resell  or  have  in  their  possession 
such  products.  This  last  is  the  presumption  if  such  products  are 
found  in  their  stores,  warehouses  or  shops.  (Art.  38.) 

The  guilty  party  shall  be  sentenced"  to  pay  costs  and  damages 
to  the  party  damaged.  (Art.  39.) 

All  imitated  marks,  with  the  exception  of  one  which  shall  be  a 
part  of  the  record,  shall  be  destroyed  by  the  Secretary  in  the 
presence  of  the  judge  and  two  witnesses.  This  shall  be  done 
after  the  experts  render  their  report,  if  in  same  they  establish 
that  they  are  imitations.  (Art.  40.) 

Articles  which  bear  imitated  marks  shall  be  sold  at  public 
auction  provided  that  they  are  not  harmful,  in  which  case  they 
shall  be  destroyed,  and  the  proceeds  shall  be  divided  in  equal 
parts  between  the  treasury  and  the  informant.  If  the  mark  was 
used  on  the  article,  the  former  shall  first  be  destroyed.  (Art.  41.) 

The  presumption  is,  that  an  article  is  offered  for  sale,  if  it  is 
held  in  a  warehouse,  store  or  shop.  (Art.  42.) 

A  genuine  mark  is  one  registered.  An  imitation  mark  is  one 
not  registered,  the  same  as  or  similar  to  one  registered.  There  is 
a  similarity  when  both  marks  have  one  or  more  similar  essential 
particulars,  or  when  they  can  be  confused  at  first  sight,  and  when 
only  by  means  of  a  careful  examination  it  is  possible  to  dis- 
tinguish one  from  the  other.  (Art.  43.) 

Procedure. 

The  Ministro  de  Hacienda  shall  send  to  each  customs  officer  a 
copy  of  the  registration  of  each  foreign  mark  which  has  been  or 
shall  be  registered  with  a  copy  of  said  mark.  (Art.  47.) 

When  an  attempt  is  made  to  import  merchandise  with  imita- 
tion marks,  the  customs  officer  shall  place  them  at  the  disposition 
of  any  justice  of  the  peace,  as  well  as  the  bills  of  lading,  manifests 
and  other  documents  which  refer  to  them. 

The  omission  of  this  duty  will  make  him  responsible  for  com- 
plicity in  the  offense,  without  prejudice  to  a  fine  of  five  hundred 
sucres,  which  the  Ministro  de  Hacienda  shall  impose  upon  him. 
(Art.  48.) 

The  presumption  is  that  an  article  bears  an  imitation  mark,  if 
it  is  imported  from  a  country  different  from  that  named  in  the 
application,  according  to  Article  16.  (Art.  49.) 

Every  machine  or  instrument  intended  for  the  counterfeiting 
of  marks  shall  be  confiscated.  (Art.  50.) 

The  President  of  the  Republic  Decrees:     (No.  2064). 

That  those  who  effect  registrations  of  trade  marks  according  to 
the  provisions  of  the  law  of  October  28,  1908,  now  in  force,  shall 


EGYPT  179 

pay,  once  only,  for  the  cost  of  the  publications  in  the  Registro 
Oficial  in  the  form  determined  by  Article  18  of  the  said  law, 
the  sum  of  10  sucres  for  each  mark  which  requires  the  said 
publications. — Communicate  this. 

Palace  of  the  Government,  in  Quito,  May  4,  1909. 
Signature  of  the  President  of  the  Republic. 
The  Minister  of  Hacienda. 
(Signed)  BORJA. 

EGYPT 

Although  nominally  a  tributary  state  of  Turkey,  it  is  practi- 
cally independent,  being  ruled  over  by  Khedives,  whose  heredi- 
tary succession  to  the  throne  is  recognized  by  an  imperial  firman 
of  Turkey,  and  the  succession  guaranteed  by  the  European 
Powers. 

The  total  area  of  Egypt  proper,  excluding  the  Sudan,  is  over 
400,000  square  miles,  and  the  population  is  about  11,000,000. 

COMMERCE — The  principal  articles  of  export  are  cotton  and 
cotton  seed,  grain  and  maize,  beans,  sugar  and  gum,  rice  and 
skins;  and  the  imports  chiefly  cotton  goods,  coal,  woolen  stuffs, 
tobacco,  indigo,  timber,  spun  cotton,  clothing  and  metals. 

TRADE  MARKS 

Duration. 

Ten  years;  renewable. 

The  absence  of  any  legal  enactment  relative  to  trade  mark 
registrations,  has  not  prevented  the  establishment  of  a  bureau  for 
the  purpose.  Since  1890  there  has  been  established  in  the  re- 
spective clerk's  offices  of  the  mixed  courts  of  Alexandria,  Cairo 
and  Mansurah  special  registers  for  trade  marks  and  designs.  A 
certificate  of  registration  with  these  courts  is  considered  in  any 
suit  prima  facie  evidence  of  the  right  to  the  use  of  the  mark  so 
registered.  The  courts,  in  suits  for  infringement,  apply  the 
principles  of  law  in  force  in  the  principal  countries  of  Europe, 
recognizing  the  right  to  a  trade  mark  as  a  species  of  property 
right  to  be  protected,  like  any  other  property  right,  by  an  action 
for  damages.  This  protection  is  accorded  to  trade  marks 
whether  registered  or  not,  the  right  to  it  depending  upon  priority 
of  use,  the  first  user  being  held  entitled  to  protection  against  the 
fraudulent  use  thereof  by  another.  The  registration  is,  therefore, 
of  value  as  a  matter  of  evidence  alone.  This,  however,  in  so 
distant  a  country,  is  in  an  action  for  infringement  a  matter  of 
the  utmost  importance,  as  the  necessity  for  proving  title  by  ex- 
traneous evidence  may,  where  there  is  need  of  quick  action, 
defeat  entirely  the  right  of  the  owner  of  the  mark  to  relief.  It  is 
deemed  desirable,  although  not  necessary,  to  register  at  each  of 
the  courts  above  named. 


180  EGYPT 

The  successful  plaintiff  in  a  suit  for  infringement  may  obtain 
not  only  an  award  of  damages  and  costs,  but  an  injunction 
against  further  infringement,  an  order  for  the  destruction  of  the 
property  bearing  the  infringing  mark  and  an  order  directing  the 
publication  at  the  expense  of  the  defendant  of  the  judgment 
against  him.  (La  Propriete  Industrielle,  1903,  p.  41 ;  1904,  pp. 
79-86.) 

A  case  involving  the  right  to  trade  mark  protection  in  this 
country  lately  came  before  the  Court  of  Mixed  Appeal,  which 
reversing  the  decision  of  the  lower  court,  granted  an  injunction 
against  the  Pyramid  Brewing  Co.,  restraining  them  from  the  use 
of  the  trade  mark  "Munich  Beer"  registered  in  the  name  of 
another.  The  court  took  the  view  that  the  name  was  not  generic 
but  indicated  the  place, of  origin,  its  excellence  being  due  to 
climatic  conditions  and  the  care  with  which  it  is  made ;  that  its 
use  by  the  appellant  on  beer  not  produced  in  that  city  should  not 
be  permitted  lest  the  public  be  deceived  and  appellee  derive  un- 
lawful profits  at  the  expense  of  the  great  popularity  which  the 
appellant's  article  had  acquired  under  that  name.  (Ch.  Inst.  of 
Pat.  Agts.,  Vol.  XXII,  p.  215.) 

The  protection  afforded  by  the  Tribunal  is  gradually  being 
built  up  by  a  series  of  decisions  prohibiting  infringements  and 
unfair  competition. 

Trade  marks  in  Egypt  can  be  registered  either  in  Cairo,  Man- 
surah  or  Alexandria. 

Triple  registration  is  by  no  means  essential  to  the  validity  of 
the  Egyptian  registration  of  a  trade  mark.  Registration  in  any 
one  of  these  three  courts  constitutes  the  fullest  protection  for 
entire  Egypt.  The  triple  registration  is  purely  optional. 

It  is  strongly  advisable,  though  not  absolutely  necessary,  to 
advertise  every  registration  in  the  local  papers  which  have  been 
selected  by  the  Tribunal  to  publish  judicial  announcements. 

In  an  infringement  suit  it  is  important  to  prove  that  the  pro- 
prietor of  the  trade  mark  has  the  right  to  his  property.  Bu  pub- 
lishing his  trade  mark  he  has  given  notice  of  ownership. 

Requirements. 

Power  of  attorney;  one  electrotype;  six  copies  of  the  mark; 
name  and  address  of  the  applicant;  also  statement  of  the  goods 
for  which  the  trade  mark  is  used. 

The  English  Language  Decreed  to  be  Official  in  the  Law  Courts. 

Bv  Khedivial  Decree  and  with  the  consent  of  the  fourteen 
Governments  who,  by  the  Treaty  of  1876,  guarantee  the  inde- 
pendence of  the  International  Courts  of  Justice  of  Egypt  (com- 
monly called  the  "Mixed  Tribunals"),  the  English  language  be- 
came official  in  those  courts  as  and  from  the  18th  of  May,  1905. 


ERITREA  iSi 

As  one  of  the  results  of  the  great  prosperity  of  Egypt  and  of 
its  expansion  as  a  mining  and  manufacturing  country,  the  pro- 
tection of  patents  and  trade  marks  there  has  taken  la~ge  propor- 
tions. It  would  be  well  if  American  manufacturers  would  more 
generally  register  their  marks  there,  the  act  in  itself  forming  a 
good  advertisement  for  their  products  and  being  calculated  to  lead 

to  inquiries  for  their  goods. 

» 
Names  of  Localities  in  Egypt. 

The  court  of  Alexandria  holds  that  the  name  of  a  city, 
country  or  locality  from  which  a  product  derives  its  reputation 
constitutes  an  indication  of  origin,  and  every  manufacturer  or 
producer  in  this  city,  country  or  locality  has  a  right  to  make  use 
of  it.  On  the  other  hand,  it  is  illegal  to  make  use  thereof  for  a 
product  which  is  not  of  that  origin.  The  name  "Tuscan"  applied 
to  a  cigar  must,  therefore,  be  considered  an  indication  of  origin, 
and  the  exclusive  use  thereof  in  Egypt  must  be  confined  to  Italian 
products  and  subject  to  the  authority  of  the  Italian  administra- 
tion in  Egypt.  (Cacace  vs.  Dimitropoulo,  Annales  de  la  Prop. 
Ind.,  1910,  p.  35.) 

Laws  in  Force  to  Prevent  the  Sale  or  Importation  of  Goods 
Bearing  a  False  Indication  of  Origin. 

The  only  law  in  force  affecting  the  matter  in  question  is  the 
Penal  Code  of  the  Native  Courts  under  which  native  Egyptians 
can  be  prosecuted  for  selling  or  keeping  for  sale  goods  bearing  a 
false  trade  mark.  Persons  committing  these  offenses,  who  are 
entitled  to  the  benefits  of  the  Capitulations,  can  only  be  tried  by 
the  Consular  Courts  in  accordance  with  the  laws  of  their  re- 
spective countries.  A  civil  action  may  be  brought  before  the 
Mixed  Tribunals  against  anyone  knowingly  importing  or  selling 
goods  bearing  a  counterfeit  or  imitated  mark,  at  the  suit  of  the 
owner  of  the  mark.  No  official  steps  are  taken  to  prevent  the 
importation  of  goods  bearing  a  false  indication  of  origin.  There 
are  no  requirements  as  to  the  marking  of  imported  goods,  except 
tobacco,  to  show  the  country  or  place  of  origin,  or  to  denote  that 
they  are  foreign. 

Marking  of  Goods:  "Marque  Deposee  or  Registered  Trade 
Mark." 


ERITREA 

Its  area  is  about  247,300  square  kilometres  (95,400  square 
miles),  with  a  population  of  about  450,000,  of  which  the  capital 
or  chief  town  is  Asmara,  a  hundred  kilometres  in  the  interior, 
with  a  population  of  about  25,000.  Massowah  has  about  18,000. 

MONEY,  WEIGHTS  AND  MEASURES — Same  as  Italy. 


i&2  ERITREA 

Lazy. 

Law :  Royal  Decrees  of  December  5,  1907" ;  and  Regulations 
(of  March  5,  1908)  for  the  Execution  of  the  Decree  of  December 
5,  1907.  No.  846. 

Duration. 
Forever. 

Who  May  Apply. 

Whoever  has  acquired  in  Italy  the  right  to  the  exclusive  use 
of  a  trade  mark  according  to  the  law  of  August  30,  1868  (No. 
4577),  has  the  right  to  protection  of  this  mark  in  the  territory  of 
the  colony  of  Eritrea  through  the  administrative  and  judicial 
authorities,  in  accordance  with  the  present  provisions. 

Merchants  or  manufacturers  who  have  establishments  in  the 
the  colony  of  Eritrea  can  obtain  protection  for  the  trade  marks 
which  they  have  adopted  for  their  products  or  merchandise,  by 
conforming  to  the  present  provisions. 

Mode  of  Application  and  Requirements. 

Whoever  desires  to  obtain  the  protection  of  trade  marks  of 
which  he  has  secured  the  exclusive  use  in  Italv,  shall  file : 

1st.  An  application  on  unstamped  paper,  stating  his  name, 
surname,  the  name  of  his  father,  his  country  of  origin,  and  fur- 
nishing, the  case  allowing,  the  same  statements  in  regard  to  his 
attorney,  all  in  accordance  with  model  A. 

2nd.  Two  copies  of  the  certificate  of  registration,  of  the 
description,  if  there  be  one,  and  of  the  declaration,  issued  by  the 
Minister  of  Agriculture,  Industry  and  Commerce  of  the  King- 
dom. 

3rd.     Two  facsimiles  of  the  mark. 

4th.  A  power  of  attorney  in  legal  form,  when  the  application 
in  not  presented  by  the  interested  party. 

5th.  The  receipt  for  the  payment  of  the  40  lire  mentioned 
under  (d)  of  Article  8  of  the  Royal  Decree  of  December  5,  1907, 
No.  846. 

Whoever  desires  to  obtain  the  protection  of  the  trade  marks 
named  in  the  second  paragraph  of  Article  1  of  the  Royal  Decree 
of  December  5,  1907,  No.  846,  shall  file,  in  addition  to  the  docu- 
ments mentioned  in  Article  8  of  the  said  Decree : 

1st.  An  application  drawn  up  according  to  Model  B,  on  un- 
stamped paper,  containing: 

(a)  His  name,  surname,  the  name  of  his  father,  his  country 
of  origin,  and,  the  case  permitting,  the  same  statement  relative 
to  his  attorney; 

(b}  A  succinct  statement  of  the  nature  of  the  mark  adopted 
(commercial  name,  figure,  engraving,  relief,  etc.)  ; 

2nd.  A  power  of  attorney  in  the  case  stated  under  No.  4  of 
the  preceding  Article. 


ERITREA  183 

-  A  detailed  description  of  the  figures  and  emblems  is  necessary, 
even  when  the  mark  consists  of  words  written  under  a  certain 
form  and  in  a  special  combination,  so  that  the  mark  thus  formed 
consists  not  only  in  the  words  in  question,  but  also  in  the  figure 
resulting  from  their  arrangement. 

The  declaration  mentioned  under  (b)  of  the  Royal  Decree  of 
December  5,  1907,  No.  846,  shall  be  drawn  up  as  follows: 

The  mark  filed  by  the  undersigned  consists  in 

(resume  of  the  description,  if  there  is  one,  or  designation  of  the 
mark,  for  example:  commercial  name,  device,  etc.)  ;  will  be  ap- 
plied to  (kind  of  articles  and  statement  of  the  use  which  the 
applicant  intends  to  make  of  the  mark  by  applying  it  to  the 
products  of  his  manufacture,  to  the  merchandise  of  his  commer- 
cial enterprise,  to  the  animals  bred  by  him,  etc.). 

If  the  registration  is  effected  through  an  attorney  the  declara- 
tion shall  read  thus :  The  mark, ,  filed  by  the  undersigned 

in  the  name  of  ,  by  virtue  of  his  special  power  of  attor- 
ney, and  consisting  in ,  will  be  applied  by  the  said 

to 

Every  application  made  for  the  purpose  of  obtaining  in  the 
Colony  the  protection  of  a  trade  mark  shall  be  addressed  to  the 
Government  of  Eritrea. 

The  certificates  of  registration  of  marks  shall  be  entered,  in 
the  original,  in  a  special  register,  which  shall  be  kept  at  the 
office  of  the  Government. 

A  certified  copy  shall  be  issued  to  the  party  interested. 

Any  additional  copies  which  may  be  requested  shall  be  issued 
upon  payment  of  10  lire,  which  shall  be  proved  by  a  receipt  from 
the  Colonial  Treasury. 

Trade  marks  can  be  registered  by  anyone,  acting  as  an  indi- 
vidual, persons  acting  as  corporations,  companies  or  legal  per- 
sons of  any  sort,  and  even  collectively  by  several  persons. 

Infringements  and  Penalties. 

It  is  forbidden  to  counterfeit  or  imitate  the  form,  the  color 
or  the  arbitrary  designation  which,  for  the  purpose  of  dis- 
tinguishing it,  have  been  placed  upon  a  product,  upon  its 
wrapper  or  upon  the  receptacles  which  contain  it,  so  as  to  pro- 
duce confusion  with  the  products  of  the  same  person  or  with 
those  of  another. 

Without  prejudice  to  more  severe  penalties  laid  down  by  the 
penal  code  for  acts  which  are  here  named,  a  fine  up  to  2,000  lire 
shall  be  imposed,  even  when  the  act  has  not  been  done  to  the 
prejudice  of  third  parties,  on  him : 

1st.  Who  counterfeits  a  mark  or  distinctive  sign  and  who 
knowingly  makes  use  of  same ; 

2nd.  Who,  without  actually  having  counterfeited  a  mark  or  a 
distinctive  sign,  makes  a  fradulent  imitation  of  same,  or  who, 


184  FALKLAND  ISLANDS 

knowingly  makes  use  of  a  counterfeited  or  fradulently  imitated 
mark  or  sign; 

3rd.  Who  knowingly  places  in  circulation,  sells  or  imports 
from  abroad,  and  for  commercial  use,  products  bearing  a  fraudu- 
lently counterfeited  or  imitated  mark  or  sign ; 

4th.  Who  knowingly  makes  use  of  a  mark,  sign,  or  emblem 
bearing  false  statements  calculated  to  lead  the  purchaser  into 
error  regarding  the  nature  of  the  product,  or  who  sells  products 
provided  with  such  marks,  signs  or  emblems. 

In  case  of  a  second  offense  the  fine  is  from  200  to  4,000  lire. 
In  any  case  it  shall  not  be  less  than  double  the  amount  of  the 
fine  imposed  for  the  preceding  offense. 

The  counterfeited  marks  or  signs,  the  instruments  which  have 
served  for  the  fraud,  as  well  as  the  products  and  articles  bearing 
such  counterfeit,  shall  be  confiscated. 

The  above  penalties  shall  be  inflicted  without  prejudice  to 
damages. 

Whoever  establishes  his  good  faith  in  the  acts  named  in  Arti- 
cles 12  and  13  shall  be  exempt  from  the  penalty. 

The  interested  party  can  in  any  case,  even  in  civil  cases,  have 
recourse  to  the  judicial  authority; 

1st.  For  the  recovery  of  damages ; 

2nd.  To  enjoin  the  use  of,  the  repetition  of,  or  the  later  circu- 
lation of.  false  statements  which  injure  him ; 

3rd.  To  enjoin  the  use  of  distinctive  signs  liable  to  cause 
confusion ; 

4th.  To  obtain  the  publication  of  the  judgment  in  the  press. 

In  the  proceedings  to  recover  damages,  the  claimant  mav  re- 
linquish his  right  to  prove  the  amount  of  the  damage  suffered,  and 
relv,  for  pecuniary  relief,  upon  the  estimate  of  the  magistrate. 

Regulations  approved  by  decree  of  the  Governor  of  the  Colony 
shall  specially  provide  more  detailed  provisions,  the  summary 
publication  of  the  certificates  issued  by  the  Government,  and 
everything  which  shall  be  necessary  for  the  execution  of  the 
present  provisions. 


FALKLAND  ISLANDS 

These  islands,  which  are  a  Crown  Colony  of  Great  Britain,  are 
situated  in  the  South  Atlantic,  about  300  miles  east  of  Magellan 
Straits. 

The  area  of  the  Fast  and  West  Falkland*.  South  Georgia,  and 
a  few  small  islands  is  7,500  square  miles.  Thev  are  maintained 
more  as  a  naval  station  from  their  position,  as  the  resources  are 
only  pastoral.  The  population  in  1911  was  estimated  at  3,000. 

MONEY,  WEIGHTS  AND  MEASURES — Same  as  Great  Britain. 


FIJI  ISLANDS  185 

Law. 
Law :   Ordinance  No.  2  of  February  25,  1903. 

Duration. 

Fourteen  years,  and  expires  with  registration  of  the  British 
trade  mark. 

To  Whom  Certificates  of  Registration  May  Be  Granted. 

A  certificate  of  registration  of  any  new  and  original  design  or 
of  any  trade  mark  may  be  granted  in  this  colony  to  any  person 
who  in  the  United  Kingdom  is  the  registered  proprietor  of  such 
design  or  trade  mark  or  to  any  person  to  whom 'all  interest  in 
such  design  or  trade  mark  in  respect  of  this  colony  has  been 
assigned.  (Sec.  2.) 

Requirements. 

Power  of  attorney  and  six  conies  of  the  mark. 


FIJI  ISLANDS 

The  Fiji  group  of  islands  became  British  possessions  in  Oc- 
tober, 1874.  They  number  about  200,  varying  in  size  from  Viti 
Levu  and  Vantia  Levu,  the  two  largest,  each  of  which  is  about 
one-seventh  the  size  of  Ireland,  to  small  islets  not  more  than  a 
mile  in  extent.  Most  of  the  smaller  islands  are  surrounded  by 
coral  reefs.  -The  whole  group  is  scattered  over  a  space  of  240 
miles  north  and  south  by  about  300  miles  east  and  west.  The 
total  area,  including  the  island  of  Rotuma,  is  8,018  square  miles. 

The  estimated  population  of  the  islands  on  the  31st  of  De- 
cember, 1911,  was  170,500,  of  whom  3.262  were  Europeans. 

MONEY,  WEIGHTS  AND  MEASURES — Same  as  Great  Britain. 

Law. 

Law:  Trade  Mark  Registration  Ordinance,  1886,  No.  4,  and 
Rules  of  December  14,  1886. 

Duration. 
Seven  years ;  renewable. 

What  May  Be  Registered. 

A  registrable  trade  mark  must  consist  of  or  contain  at  least 
one  of  the  following  essential  particulars : 

1.  The  signature  (or,  in  the  case  of  an  incorporated  com- 
panv,  the  name  written  in  some  particular  and  distinctive  man- 
ner>  of  the  firm  applying  for  the  registration,  or  of  a  predeces- 
sor in  the  business;  or 


i86  FINLAND 

2.  An  invented  word  or  invented  words;  or 

3.  A  word  or  words  having  no  reference  to  the  character  or 
quality  of  the  goods,  and  not  beino-  a  geographical  name ;  or 

4.  A  mark  which  is  otherwise  of  a  distinctive  character  so 
as   to  be   adapted   to  distinguish  practically  the   goods   of  the 
proprietor  of  the  trade  mark  from  those  of  other  firms. 

Requirements. 

Power  of  attorney ;  seven  copies  of  the  mark ;  electrotype ; 
application  accompanied  by  representations  of  trade  marks  must 
be  advertised  in  "Gazette"  and  newspapers. 

Fees. 
On  application  5s;  on  completion  £1.    Renewal  fee  £1. 

Assignments. 

Trade  marks  are  assignable  with  good  will.  Sec.  3,  Ord.  IV., 
1886.  The  Government  fee  for  assignment  is  10s. 

Classification. 
None. 
Marking  Goods :     "Registered  Trade  Mark." 


FINLAND 

The  Grand  Duchy  of  Finland,  though  belonging  to  Russia, 
has  a  constitution  of  its  own,  and  makes  its  own  laws,  subject 
to  veto  or  revision  of  the  committee  for  the  affairs  of  Finland  in 
St.  Petersburg. 

Agriculture,  forestry  'and  dairy-farming  are  the  chief  re- 
sources of  the  Finlanders,  and  the  produce  of  the  country  is 
generally  nearly  sufficient  for  their  own  maintenance,  any  de- 
ficiency in  cereals  being  easily  supplied  by  Russia.  Most  of  the 
butter  goes  to  England,  and  has  much  improved  in  quality  of 
late.  Forests  cover  about  three-fifths  of  the  country,  besides 
which  the  interior  lakes  occupy  immense  tracts. 

The  total  number  of  inhabitants  in  1911  was  3,121,540,  al- 
most all  of  the  Lutheran  religion. 

The  granite  in  the  Kalajoki  district  is  beginning  to  make 
itself  known  in  Scotland,  judging  by  the  quantities  exported.  It 
is  of  a  gray  color,  and  particularly  fine  grained.  Considerable 
quanities  are  also  sent  to  Russia  annually. 

The  principal  articles  of  export  are  wood,  corn,  etc.,  paper- 
pulp,  iron  and  steel,  paper,  butter,  fish,  tar ;  and  the  imports  con- 
sist of  corn,  etc.,  iron  and  steel,  petroleum,  coffee,  sugar,  cotton, 
fish,  tobacco,  coals,  salt. 


FINLAND  187 

PORTS  OF  FINLAND — With  regard  to  their  commercial  import- 
ance, the  ports  of  Finland  range  as  follows:  Wiborg,  Abo, 
Helsingfors,  Kotka,  Bjorneborg,  Uleaborg,  Hango,  Nickolaistad 
(Wasa).  The  above  are  the  eight  principal  ports,  according  to 
the  latest  published  statistics.  The  commerce  of  the  remainder 
is  insignificant. 

MONEY,  WEIGHTS  AND  MEASURES — The  monetary  unit  in  Fin- 
land is  the  mark,  which  is  divided  into  100  penni  and  is  equal 
to  9  l/2d=20  cents  United  States.  For  weights  and  measures 
Finland  has,  in  virtue  of  a  decree  dater  December  22,  1886, 
adopted  the  metrical  system. 

Law. 
Laws  of  February  11,  1889,  Ordinance  January  22,  1903. 

Duration. 

Ten  years;  renewable.  Trade  marks  registered  by  foreign- 
ers are  protected  only  so  long  as  they  are  protected  in  the  home 
country. 

Who   May  Apply. 

Whoever,  in  Finland,  makes  or  sells  products  has  the  right 
to  acquire  by  registration  the  exclusive  right  to  make  use  of  a 
special  mark  in  order  to'  distinguish  his  products  in  general 
commerce  from  those  of  others.  (Art.  1.) 

What  Cannot  Be  Registered. 

No  mark  shall  be  registered: 

1.  If  the  same  or  a  similar  one  has  been  registered  by  a 
third   person. 

2.  If  the  mark  is  composed  entirely  or  substantially  of  fig- 
ures, characters,  letters  or  word,  unless  by  their  particular  form 
or  by  certain  arrangements  or  additions  these  signs  constitute  a 
figure  mark,  or  also  unless  the  words  indicate  the  name  or  the 
firm  of  the  depositor  or  his  ownership. 

3.  If  the  mark  is  composed  substantially  or  entirely  of  signs 
or  emblems  generally  employed  in  a  particular  trade. 

4.  If  the  mark  contains  unlawfully  the  name  of  a  third  per- 
son or  words  which  may  be  confounded  therewith. 

5.  If   the    mark    contains    representations    contrary   to   good 
morals,  to  public  order,  or  if  it  is  of  a  scandalous  or  manifestly 
deceptive  character. 

6.  If  the  mark  contains  public  arms  or  the  insigna  of  chival- 
ric  orders.     (Art.  4.) 

Mode  of  Application. 

A  full  statement  of  the  name,  address  and  calling  of  the 
petitioner. 


i88  FRANCE 

If  the  depositor  claims  the  mark  only  for  certain  products, 
a  statement  of  what  such  products  are. 

The  petition  must  be  accompanied  by: 

Two  specimens  of  the  mark  printed  upon  strong  paper,  15  cm. 
long  and  10  cm.  wide. 

Two  blocks  (cliches)  of  the  same  size  suitable  for  the  re- 
production of  the  mark. 

Receipt  for  the  tax. 

If  more  than  one  mark  is  applied  for,  the  complete  documents 
for  each  mark  must  be  sent. 

When  a  mark  from  abroad  is  offered,  it  must  be  accom- 
panied by  a  certified  showing  of  registry  in  the  country  of 
origin. 

Foreign  applicant  for  registration  must  appoint  a  representa- 
tive domiciled  in  the  Grand  Duchy.  (Art.  3.) 

Assignments. 

Transfer  of  the  business  in  which  the  mark  is  used  carries 
with  it  the  transfer  of  the  mark,  unless  otherwise  expressly 
stipulated.  (Art.  5.) 

Penalties. 

Wilful  and  fraudulent  use  of  a  mark  or  of  a  substantial  imi- 
tation thereof,  or  sale  of  goods  bearing  such  mark,  is  punish- 
able by  fine  (50  to  1,000  marks),  or  imprisonment  (for  not 
more  than  one  year). 

The  marks  thus  used  may  be  destroyed  even  if  this  involves 
the  destruction  of  the  goods.  (Art.  10.) 

Requirements. 

Certified  copy  of  home  registration,  not  to  be  legalized;  legal- 
ized power  of  attorney ;  two  copies  of  mark ;  two  electrotypes  or 
wood  cuts.  (Form  of  application  may  be  obtained  from  B. 
Singer's  offices.) 

Marking  Goods :     "Varumarke." 


FRANCE 

The  area  of  France  is  207,054  English  square  miles,  and  accord- 
ing to  the  census  taken  in  March,  1911,  the  population  was 
40,250,310. 

The  form  of  government  in  France  is  that  of  a  republic.  The 
President  of  the  Republic  is  the  chief  executive  officer,  and  is 
elected  every  seven  years  by  the  votes  of  the  two  Chambers. 

MONEY — The  monetary  unit  of  France  is  the  franc=9  l/2d.=19 
cents  United  States. 

WEIGHTS  AND  MEASURES — The  metrical  system  is  in  use. 


FRANCE  189 

Law. 

Law  of  June  23d,  1857,  amend'ed  by  Law  of  3d  May,  1890. 
Decree  27  February,  1891. 

Term. 

The  registration  has  effect  for  a  period  of  fifteen  years. 
The  property  in  a  trade  mark  may  always  be  preserved  for  a 
further  term  of  fifteen  years  by  new  registration.    (Art.  3.) 

What  May  Be  Registered. 

Names  of  a  distinctive  form,  denominations,  emblems,  impres- 
sions, stamps,  seals,  wood  cuts,  reliefs,  letters,  numbers,  envelopes 
and  all  other  signs  serving  to  distinguish  the  products  of  a  manu- 
facture or  articles  of  commerce.  (Art.  1.) 

The  statutory  definition  of  a  mark  is  a  very  broad  and  general 
one,  the  particular  determination  of  what  may  constitute  a  valid 
trade  mark  being  left  to  the  courts.  The  decisions  hold  that  a 
valid  trade  mark  may  consist  of  the  form  of  the  wrapper,  con- 
tainer, bottle  or  other  receptacle,  the  metalic  cap  applied  to  the 
neck  of  a  bottle,  the  colored  band  or  string  which  decorates  it, 
or  colored  threads  woven  into  the  border  of  a  textile.  These 
features  of  the  goods  are  accepted  as  valid  trade  marks,  even  if 
employed  without  any  special  devices.  (Poullet,  Marques  de 
Fabrique,  Fourth  Ed.,  p.  39.) 

A  decision  of  the  Court  of  Appeals  of  Paris  emphasizes  the 
worthlessness  of  registrations  made  by  foreigners  in  that  coun- 
try, of  marks  not  previously  registered  at  home. 

The  registrants  in  this  instance  were  German,  and  had  regis- 
tered in  France  without  previous  registration  in  their  own  coun- 
try. It  was  held  that  the  mark  of  a  German  citizen  was  not 
entitled  to  protection  in  France  unless  it  had  acquired  the  right 
to  such  protection  in  Germany,  and  as  the  right  thereto  depended 
upon  registration  and  therefore  had  not  been  acquired  by  the 
applicant,  the  mark  was  without  protection  in  France.  (Guterman 
&  Co.  vs.  La  Societe  "La  Soie,"  La  Propriete  Industrielle,  1905, 
p.  106.) 

The  ownership  of  a  trade  mark  is  acquired  through  priority 
of  use  of  the  mark,  words  or  emblem,  in  any  line  of  business  or 
manufacture.  It  is  independent  of  any  registration  or  govern- 
mental permit.  In  other  words,  the  merchant  or  manufacturer 
who  first  uses  a  word,  mark  or  sign  to  designate  his  goods,  or 
articles  of  his  manufacture,  has  the  right  to  interdict  the  use  of 
said  emblem  or  mark  by  any  other  person  whatsoever,  in  the 
same  line  of  business,  and  the  burden  of  proof  rests  on  him  or 
them  who  may  thereafter  lay  claim  to  the  said  word,  mark  or 
sign. 

From  the  moment  a  trade  mark  is  registered,  as  prescribed  by 


I9°  FRANCE 

law,  it  must  be  respected,  whether  it  is  used  or  not,  and  any  per- 
son, other  than  the  owner,  who  uses  it,  claiming  abandonment 
does  it  at  his  peril. 

The  title  to  a  trade  mark  depends  upon  priority  of  use  and 
is  independent  of  any  registration  or  governmental  permit  what- 
ever. It  has  been  the  practice  of  the  Patent  Office  to  register  a 
mark,  in  spite  of  a  conflicting  prior  registration,  where  the  appli- 
cant is  able  to  show  that  the  earlier  registrant  has  abandoned  the 
use  of  his  mark. 

Under  the  law  of  France  the  registration  of  a  trade  mark  is 
merely  declarative  of  property  and  not  attributive ;  that  is  to  say, 
no  title  is  secured  by  the  mere  registration,  the  validity  of  the 
registration  being  dependent  upon  priority  of  use  by  the  regis- 
trant. In  a  decision  of  the  court  of  Lyons  the  plaintiff  had  regis- 
tered in  1907,  under  the  French  law,  the  word  "Forward"  as  a 
trade  mark  for  bicycle  brakes.  The  court  said  this  registration 
was  of  no  effect  to  give  the  plaintiff  any  title  to  the  mark,  if  it 
were  shown  that  it  had  been  previously  used  by  some  one  else.  It 
appeared  that  the  defendant  had  deposited  with  a  local  bureau  in 
Lyons,  eight  days  before  the  plaintiff's  registration  of  the  word 
under  the  trade  mark  law,  a  model  of  a  bicycle  brake  bearing  the 
mark  "Forward."  This  registration,  the  court  said,  was  only 
important  as  a  declaration  of  the  defendant's  claim  to  the  right  to 
use  the  mark,  and  showed  that  he  had  already  made  such  use, 
before  the  registration  by  the  plaintiff.  Secondly,  it  was  not  to 
the  registration  that  we  must  look  for  the  proof  of  the  plaintiff's 
title,  but  to  the  question,  which  of  the  two  parties  had  first  made 
use  of  the  mark  in  business.  The  evidence  upon  which  the  two 
parties  relied,  to  show  the  extent  and  time  of  their  use  of  the 
mark,  is  not  important ;  only  the  conclusion  of  the  court  is  of  gen- 
eral interest.  Finding  that  the  complainant  was  prior  in  point  of 
time  to  the  defendant,  in  making  use  of  the  mark,  the  court  said 
that  he  had  shown  a  superior  title  and  justified  his  registration 
of  the  trade  mark,  which  was  regular  and  valid.  Accordingly, 
the  court  declared  the  plaintiff  entitled  to  the  exclusive  use  of 
the  mark,  and  held  that  in  applying  the  mark  to  bicycle  brakes 
sold  by  him,  the  defendant  had  infringed  upon  the  plaintiff's 
rights  and  had  caused  the  plaintiff  damages  which  he  should  be 
required  to  make  good.  The  case  being  barren  of  any  evidence 
upon  which  the  amount  of  the  damages  sustained  by  the  plaintiff 
could  be  determined,  the  court  appointed  a  commission  of  three 
members,  to  take  and  state  from  the  defendant's  books  and  other 
evidences  submitted,  an  account  of  the  damages  caused  by  the 
infringement,  and  to  submit  their  report  to  the  court  for  further 
action.  (Gonichon  vs.  Gattelet,  Annales  de  la  Prop.  Ind.,  1910, 
p.  140.) 

The  Court  of  Cusset  in  a  decision  holds  that  property  in  a 
trade  mark  is  entirely  independent  of  use  of  the  mark  and  that 


FRANCE  191 

it  is  no  defense  to  an  action  for  infringement  of  a  trade  mark  that 
the  registrant  did  not  use  the  mark  upon  any  product  of  his,  either 
at  the  time  it  was  registered,  or  at  the  time  the  action  was 
brought.  The  extent  of  the  trade  mark  protection  is  determined 
entirely  by  the  fact  of  registration  and  by  nothing  else.  (Cannone 
vs.  Dauphin,  Ann.  de  la  Prop.  Ind.,  1909,  p.  21.) 

Mode  of  Application. 

No  person  shall  claim  the  exclusive  property  in  a  mark  who 
has  not  filed  at  the  record  office  of  the  tribunal  of  commerce  to 
whose  jurisdiction  his  place  of  residence  belongs: 

1.  Three  facsimiles  of  such  mark. 

2.  The  electrotype  of  this  mark  and  a  power. 

In  case  of  filing  of  several  marks  belonging  to  the  same  person, 
one  single  certificate  will  be  given,  but  he  must  file  as  many 
facsimiles  in  triplicate  and  as  many  electros  as  there  are  distinct 
marks. 

One  of  the  facsimiles  filed  will  be  returned  to  the  applicant 
bearing  the  visa  of  the  record  clerk  and  indicating  the  day  and 
hour  of  filing. 

The  dimensions  of  electros  shall  not  exceed  twelve  centimeters 
either  way. 

The  electros  will  be  returned  to  the  parties  interested  after 
the  official  publication  of  trade  marks  by  the  Department  of 
Commerce,  Industry  and  Colonies.  (Art.  2.) 

Penalties. 

Will  be  punished  by  a  fine  of  from  fifty  francs  to  three  thou- 
sand francs  and  by  imprisonment  of  from  three  months  to  three 
years  or  by  one  of  these  penalties  only : 

1.  Those  who  have  counterfeited  a  trade  mark  or  made  use  of 
a  counterfeited  trade  mark. 

2.  Those  who  have  fraudulently  affixed  on  their  products  or 
the  articles  of  their  commerce  a  trade  mark  belonging  to  another 
party. 

3.  Those  who  have  knowingly  sold  or  offered  for  sale  one  or 
more  products  bearing  trade  mark  either  counterfeited  or  fraudu- 
lently affixed.   (Art.  7.) 

Will  be  punished  by  a  fine  of  from  fifty  francs  to  two  thousand 
francs  and  by  imprisonment  of  from  one  month  to  one  year  or  by 
one  of  these  penalties  only : 

1.  Those  who  without  counterfeiting  a  trade  mark  have  fraud- 
ulently imitated  the  same  so  nearly  as  to  deceive  a  purchaser,  or 
who  have  made  use  of  a  trade  mark  fraudulently  imitated. 

2.  Those  who  have  made  use  of  a  mark  bearing  indications  of 
a  kind  to  deceive  a  purchaser  as  to  the  nature  of  the  products. 

3.  Those  who  have  knowingly  sold  or  offered  for  sale  one  or 


192  FRANCE 

more  products  bearing  a  trade  mark  fraudulently  imitated  or 
bearing  indications  of  a  kind  to  deceive  a  purchaser  as  to  the 
nature  of  the  products.  (Art.  8.) 

Will  be  punished  by  a  fine  of  from  fifty  to  one  thousand  francs 
and  by  imprisonment  of  from  fifteen  days  to  six  months  or  by  one 
of  these  penalties  only : 

1.  Those  who  have  not  affixed  on  their  products  a  mark  de- 
clared to  be  compulsory. 

2.  Those  who  sold  or  offered  for  sale  one  or  more  products  not 
bearing  a  mark  declared  to  be  compulsory  for.  this  special  kind 
of  products. 

3.  Those  who  have  not  observed  the  provisions  of  decrees 
rendered  in  execution  of  Article  1  of  the  present  law.    (Art.  9.) 

Jurisdiction. 

Civil  suits  referring  to  trade  marks  are  to  be  brought  before 
the  Civil  Tribunal  and  will  be  judged  summarily. 

In  case  of  an  action  taken  by  way  of  a  criminal  suit,  if  the 
defendant  in  his  defence  raises  questions  relating  to  the  property 
of  the  mark,  the  Criminal  Police  Tribunal  will  say  whether  an 
exception  shall  be  made.  (Art.  16.) 

The  property  of  a  mark  may  through  the  intermediary  of  a 
notary  have  a  detailed  description  taken  with  or  without  seizure 
of  the  products  which  he  contends  to  be  marked  to  his  prejudice, 
and  in  non-compliance  with  the  prescriptions  of  the  present  law, 
on  the  grounds  of  an  ordinance  issued  by  the  President  of  the  Civil 
Tribunal  of  First  Instance  or  by  the  Justice  of  the  Peace  of  the 
canton  if  there  be  no  tribunal  at  the  place  where  the  products  to 
be  described  or  seized  are  located. 

The  ordinance  is  granted  on  simple  request  accompanied  by  the 
certificate  of  registration  of  the  mark.  It  contains,  if  required, 
the  appointment  of  an  expert  to  assist  the  notary  in  his  description. 

If  seizure  is  asked  for  the  judge  may  require  security  from  the 
applicant  who  must  lodge  same  before  seizure  will  be  allowed. 

Under  penalty  of  annulment  and  of  damages  against  the  notary, 
copy  of  the  ordinance  and  of  the  document  stating  that  security, 
if  any,  has  been  lodged,  must  be  left  with  the  holders  of  the  objects 
described  or  seized.  (Art.  17.) 

General  and  Transient  Provisions. 

No  foreign  products  bearing  either  a  mark  or  the  name  of  a 
manufacturer  resident  in  France,  or  the  indication  of  the  name  or 
place  of  a  French  manufactory,  may  be  imported  into  France  for 
sale,  storage  or  other  purpose,  and  such  products,  if  imported, 
may  be  seized  at  any  place  whatsoever,  either  on  proceedings  by 
the  Custom  House  authorities,  or  on  request  of  the  Public  Prose- 
cutor or  of  the  injured  party. 

In  cases  where  seizure  is  operated  by  the  Custom  House  author- 


FRANCE  193 

ities,  the  official  report  of  seizure  shall  be  immediately  forwarded 
to  the  Public  Prosecutor. 

The  time  in  which  action  provided  by  Article  18  must  be  taken 
under  penalty  of  annulment  of  the  seizure,  either  by  the  injured 
party  or  by  the  Public  Prosecutor,  is  fixed  at  two  months. 

The  provisions  of  Article  14  also  apply  to  products  seized 
in  virtue  of  the  present  Article.  (Art.  19.) 

Infringement. 

The  civil  court  of  Caen  holds  that,  in  a  case  of  trade  mark 
infringement,  the  excuse  of  good  faith  is  never  admissible  in 
defense  either  of  a  criminal  proceeding,  or  of  a  civil  suit.  There- 
fore, a  printer  who  received  from  a  third  person,  up  to  that  time 
unknown  to  him,  an  order  to  reproduce,  almost  entirely,  a  certain 
trade  mark,  already  known  as  that  of  a  certain  house,  and  who 
executed  the  order,  cannot  be  heard  in  his  own  defense,  to  say 
that  he  acted  in  good  faith,  nor  can  he  justify  himself,  by  the 
assurance  of  the  party  giving  the  order,  that  the  work  was  to  be 
done  with  the  consent  and  authorization  of  the  owners  of  the 
mark.  Under  these  circumstances  the  printer  is  jointly  guilty  with 
the  party  for  whom  the  order  was  executed,  and  judgment  should 
be  given  against  both,  without  any  'right  of  recourse  to  the  printer, 
over  or  against  the  party  for  whom  he  worked.  (Annales  de  La 
Prop.  Ind.,  1910,  p.  29.) 

The  same  principal  of  the  irrelevancy  of  the  plea  of  good  faith, 
by  way  of  a  defense  to  a  suit  for  infringement,  was  also  pro- 
nounced during  the  past  year  by  the  civil  court  of  Pan,  which 
held  that  the  mere  fact  of  infringement  constituted  a  cause  of 
action,  without  any  need  of  inquiring  into  the  good  faith  of  him 
who  is  guilty  of  reproducing  the  mark,  or  who  made  use  of  the 
mark  thus  reproduced.  (Mumm  &  Co.  vs.  Dudon  et  al.,  Annales 
de  La  Prop.  Ind.,  1910,  p.  31.) 

Trade  Secrets. 

The  commercial  court  of  Marseilles  holds  that  an  ex-employee, 
when  he  sets  himself  up  in  business  in  the  same  line  as  his  former 
employer,  must  respect  the  commercial  secrets  and  methods  which 
became  known  to  him  by  reason  of  his  employment.  He  cannot, 
without  rendering  himself  liable  for  unfair  competition,  offer  to 
the  customers  of  his  old  employer  articles  which  were  specialties 
with  that  house,  and  the  preparation  and  sale  of  which  involved 
the  use  of  knowledge  thus  confidentially  acquired.  (Colliopulo  vs. 
Joannides,  Annales  de  La  Prop.  Ind.,  1910,  p.  31.) 

DECISIONS. 
Trade  Names  Under  the  International  Convention. 

A  case  of  importance  involving  the  right  to  protection  of  trade 
names  without  registration  in  countries  which  have  become  par- 

13 


194  FRANCE 

ties  to  treaties  similar  to  the  International  Convention  for  the 
Protection  of  Industrial  Property,  was  decided  by  the  Court  of 
Appeals  of  Nimes,  France.  The  plaintiffs  in  question  were  Italian 
citizens  and  were  the  owners  of  a  trade  mark  which  consisted 
essentially  of  their  name  "Barracco,"  used  in  a  distinctive  form 
but  without  the  addition  of  any  other  sign  or  character  whatever. 
It  was  held  that  under  the  treaties  existing  between  France  and 
Italy,  the  mark  was  entitled  to  protection  irrespective  of  regis- 
tration, and  that  although  not  registered  in  France  until  1898, 
it  had  not  remained  during  that  time  without  protection  and  was 
entitled  to  protection  as  a  trade  name.  (Barracco  Freres  vs. 
Carenou  et  Tour,  La  Propriete  Industrielle,  1905,  p.  237.) 

Protection  of  Names  of  Localities. 

A  decision  of  the  Tribunal  of  Lyons  involved  the  use  of  the 
word  "Munich,"  in  controversy.  This  decision  pronounced  it 
unfair  competition  in  trade  to  sell  French  beer  in  casks  bearing 
the  mark  "Munich"  and  required  the  defendant  to  replace  the 
mark  with  the  designation  "Process  of  Munich."  (La  Propriete 
Industrielle,  1905,  p.  232.) 

False  Indications  of  Origin. 

Under  date  of  April  14,  1891,  France,  Great  Britain,  Spain, 
Switzerland  and  Tunis  concluded  a  convention  for  the  suppression 
of  false  marks  of  origin  on  goods,  to  which  convention  Portugal 
and  Brazil  have  since  become  parties.  This  convention  provides 
for  the  seizure  on  importation  into  any  of  these  countries  of  goods 
bearing  a  mark  falsely  indicating  that  they  are  the  product  of  any 
of  the  contracting  states. 

The  French  law  on  the  subject  provides  that  no  foreign  product 
which  shall  bear  any  name  or  trade  mark,  or  any  sign  or  indication 
whatsoever,  calculated  to  induce  the  public  to  believe  it  was 
manufactured  in  France,  or  is  of  French  origin,  shall  be  admitted 
to  entry  at  any  custom  house  or  bonded  warehouse,  or  be  allowed 
to  be  shipped,  or  to  circulate  through  the  country.  This  law,  of 
recent  years,  was  given  by  the  customs  authorities  a  rather  liberal 
interpretation,  but  during  the  past  twelve  months  a  different, 
spirit  seems  to  have  prevailed.  Hence,  it  behooves  exporters  to  be 
exceedingly  careful  and  not  to  take  any  risks. 

There  are,  however,  a  certain  number  of  decisions  which  might 
help  to  form  a  clear  idea  of  what  is  prohibited  and  what  is  per- 
mitted. It  is  prohibited,  for  instance,  to  use  on  a  label,  etc.,  the 
name  of  a  French  firm,  whether  or  not  the  firm  deals  in  the  kind 
of 'merchandise  in  question.  It  is  equally  prohibited  to  place  on 
any  article  a  French  proper  name,  such  as  "Lola,"  "Loubet," 
"Sardou."  or  the  name  of  a  French  city  or  province  without 
further  indicating  the  origin  of  the  merchandise.  On  the  other  hand, 


FRANCE 


195 


the  use  of  the  French  language  to  designate  the  nature  of  the 
imported  products  is  not  held  necessarily  a  violation  of  the  law. 
Moreover,  the  exporters  may  use  French  proper  names,  and  in 
fact  any  labels  they  choose,  provided  they  indicate  clearly  thereon 
the  origin  of  the  goods  sold.  This  may  be  done  by  adding  to  the 
other  marks,  in  plain  and  conspicuous  letters,  the  words:  "Im- 
porte  des  Etats-Unis  d'Amerique"  or  "Fabrique  aux  Etats-Unis 
d'Amerique."  But  these  words  must  be  printed  or  stamped  in  the 
same  manner  as  the  rest  of  the  label,  and  so  as  not  to  be  easily 
removed  or  erased. 

All  the  decisions  in  fact  tend  to  protect  the  prospective  pur- 
chaser against  any  possible  deception,  and  in  the  light  of  the 
rulings  made  to  this  day  the  only  absolutely  safe  course  to  follow 
for  the  American  exporter  is  to  avoid  using  any  French  marks 
or  designations.  If  he  decides  otherwise,  then  let  him  indicate,  in 
any  unmistakable  manner  on  the  label  or  merchandise  that  the 
goods  were  produced  or  manufactured  in  the  United  States. 

Indications  of  Succession. 

The  care  with  which  the  French  law  requires  that  facts  of  suc- 
cessorship  in  business  be  shown  in  connection  with  the  marking 
and  sale  of  goods,  is  indicated  by  a  decision  of  the  Court  of 
Lyons,  under  date  of  May  18,  1906.  One  Gallifet  and  another  had 
been  engaged  in  the  manufacture  of  a  liquor  known  as  "Liqueur 
Gallifet."  In  1880  they  separated,  the  business  being  purchased 
by  Primat,  who  continued  it,  subsequently  selling  to  Vincent  & 
Co.  Gallifet  engaged  in  business  himself,  afterward  associating 
his  son-in-law,  Ballet,  whom  the  latter  finally  succeeded  to  the 
business.  In  1894.  upon  the  suit  of  Gallifet,  Primat  was  obliged 
to  add  to  the  old  label  of  Gallifet  &  Co.,  which  he  was  using,  a 
statement  that  he  was  the  successor  of  the  former  firm.  In  this 
suit  Vincent  &  Co.  were  likewise  obliged  to  indicate  their  succes- 
sion in  the  same  wray,  while  Ballet  was  compelled  to  add  to  his 
labels  a  statement  that  he  was  doing  business  as  the  successor 
of  Gallifet.  (Vincent  et  Cie.  c.  Ballfet-Gallifet,  La  France 
Judiciaire,  June  23,  1906,  p.  209.) 

The  Nature  of  Trade  Mark  Rights. 

The  right  to  a  trade  mark  depends  entirely  upon  use  and 
where  registration  without  use  confers  no  title,  the  law  of 
France  secures  to  the  registrant  of  a  mark  the  title  thereto  irre- 
spective of  any  use  by  him.  In  an  action  brought  against  the 
alleged  in f ringer  of  a  mark,  the  defense  was  interposed  that 
the  remedy  to  wrhich  it  was  applied  had  not  complied  with  the 
requirements  of  law  for  the  sale  of  remedies  in  France,  and  that 
the  sale  of  it  was  therefore  unauthorized.  The  Court  of  Appeal 
of  Caen,  under  date  of  February  23,  1905,  held  that  the  property 


196  FRANCE 

in  a  trade  mark  is  independent  of  the  uses  thereof  and  of  the 
nature  and  composition  of  the  product  which  it  serves  to  dis- 
tinguish. A  trade  mark,  the  court  said,  has  an  existence  of  its 
own  distinct  from  the  product  upon  which  it  is  applied  and  does 
not  fall  into  the  public  domain  even  by  reason  of  the  fact  that 
the  sale  of  that  product  is  prohibited  by  the  laws  of  the  country, 
but  remains,  nevertheless,  the  property  of  the  registrant,  who 
always  retains  the  right  to  prosecute  for  its  infringement.  It 
was,  therefore,  a  matter  of  no  importance  whether  or  not  the 
plaintiff's  product  was  authorized  to  be  sold  under  the  laws  of 
France. 

It  was  further  held  that  the  use  by  the  defendant  of  the 
plaintiff's  mark  in  his  catalogues  and  price  lists  and  in  adver- 
tisements constituted  an  infringement  of  the  mark.  Accordingly, 
the  decision  of  the  lower  court  awarding  the  sum  of  two  hun- 
dred and  fifty  francs  damages  to  the  plaintiff  was  affirmed  with 
costs.  (Champigny  &  Co.  c.  Foucault-Rosseau,  Bulletin  Officiel, 
1906,  pp.  162,  183.) 

A  later  decision  of  the  Court  of  Cassation,  under  date  of 
January  24,  1906,  emphasized  even  more  strongly  the  fact  that 
the  right  to  a  trade  mark  in  France  is  quite  independent  of  any 
use  thereof  by  the  registrant.  Plaintiff  had  registered  in  1847 
a  trade  mark  for  thread,  among  other  kinds,  sewing  silk.  The 
defendants  claimed  that  the  plaintiffs  had  abandoned  the  mark 
and  had  therefore  forfeited  their  right  to  it  so  far  as  sewing  silk 
was  concerned,  it  being  alleged  that  it  had  fallen  into  disuse  by 
the  plaintiffs  for  more  than  thirty  years.  The  court  said  that  a 
trade  mark  became  the  exclusive  property  of  whoever  registered 
it  as  required  by  law,  that  the  right  which  arose  from  the  regis- 
tration was  not  extinguished  by  disuse  of  the  mark,  but  that 
the  property  therein,  conferred  by  the  registration,  gave  to  the 
registrant  the  right  to  punish  the  wrongful  use  of  the  mark  by 
another,  which  right  was  dependent  upon  no  other  condition 
whatever  in  its  exercise. 

This  right,  therefore,  could  not  be  defeated  by  evidence  that 
the  registrant,  either  at  the  time  of  registration  or  at  the  time 
of  beginning  suit,  did  not  manufacture  the  product  to  which 
this  mark  was  applied.  The  defense  of  abandonment  was  held 
not  to  be  made  out. 

The  defendants  furthermore  claimed  that  they  had  used  the 
mark  in  question  since  1859,  a  period  of  more  than  thirty  years, 
that  their  use  thereof  had  been  uninterrupted,  peaceful,  public 
and  definite,  that  they  had  used  it  as  the  owners  thereof  for 
sewing  silk  and  that  they  had  thus  acquired  a  right  by  pre- 
scription to  the  mark  for  these  goods.  Upon  the  question  of 
whether  the  title  to  a  mark  could  be  thus  acquired,  the  court 
expressed  no  opinion,  but  declared  that  no  such  right  could  be 
acquired  in  this  case  by  reason  of  the  prior  registration  of  the 


FRANCE  197 

mark  by  the  plaintiff.     ( Charbon-W  aganay  &  Co.  c.  Vrau  &  Co. 
Bulletin  Officiel,  1906,  p.  334.) 

Association  Trade  Marks. 

The  provisions  of  the  United  States  trade  mark  law,  which 
extends  the  benefits  thereof  to  associations,  as  well  as  to  persons, 
firms  and  corporations,  gives  interest  to  a  decision  of  the  Court 
of  Appeals  of  Nimes  in  an  action  instituted  by  and  in  the  name 
of  an  association  for  infringement  of  its  trade  mark. 

It  appears  that  an  association  of  confectioners  of  Marseilles 
brought  criminal  proceedings  for  infringement  of  a  trade  mark 
adopted  by  the  association.  The  court  held  that  associations  of 
the  character  of  the  plaintiff,  having  for  their  object  the  pro- 
tection of  the  common  interests  of  its  members,  could  sustain  an 
action  only  in  the  cases  specifically  provided  by  law,  to-wit:  in 
cases  which  involve  the  common  interests  of  the  associates,  as 
for  the  collection  of  dues  from  members,  or  for  injury  to  the  com- 
mon property. 

The  office  of  a  trade  mark  the  court  defined  to  be,  to  indicate 
the  origin  of  the  merchandise  to  the  purchaser  and  to  protect  the 
trade  and  reputation  of  the  manufacturer  of  the  goods.  The 
interest  which  it  represented  was,  therefore,  private  and  per- 
sonal to  the  manufacturer  and  not  general  to  all  the  members  of 
the  association  or  profession.  Moreover,  in  order  to  protect  and 
maintain  the  property  in  the  trade  mark  the  mark  must  be  com- 
mercially used.  An  association,  not  being  capable  of  carrying 
on  commerce  itself,  could  not  use  and  therefore  could  not  law- 
fully hold,  a  trade  mark.  Not  being  able  to  maintain  its  title  to 
the  trade  mark  as  an  association,  it  was  in  no  position  to  bring 
an  action  for  infringement  of  the  mark.  The  injury  must  be 
regarded  as  personal  and  the  right  of  action,  if  any  exists,  be- 
longs to  the  individual  members  of  the  association.  (Syndicate, 
etc.  vs.  Corriol.  La  Propriete  Industrielle,  1908,  p.  59.) 

Liability  of  the  Manufacturers  of  Counterfeit  Labels. 

A  Parisian  court  has  decided  that  the  manufacture  of  blocks, 
from  which  infringing  marks  may  be  printed,  itself  constitutes 
infringement  of  a  trade  mark  and  renders  the  lithographer  liable 
as  an  infringer.  '-^M 

The  case  was  one  of  misuse  of  the  name  "Menier"  for  choco- 
late. The  well  known  house  of  that  name  which  for  many 
years  had  been  engaged  in  the  sale  of  cocoa  and  chocolate  had 
long  made  the  name  "Menier"  a  characteristic  element  of  all 
trade  marks  registered  by  it  and  had  made  the  designation 
"Chocolate-Menier"  well  known  as  indicative  of  its  goods. 

Another  party  of  the  same  name  registered  a  trade  mark,  an 
essential  feature  of  which  was  the  words  "Chocolate  Menier." 
It  appeared  that  he  had  never  actually  made  use  of  the  mark, 


198  FRANCE 

but  had  procured  the  manufacture  of  four  blocks  for  purposes 
of  registration,  with  the  intention  of  actively  engaging  in  busi- 
ness when  he  could  raise  the  necessary  capital.  As  to  him  the 
court  made  no  question  of  his  liability  and,  as  to  the  manu- 
facturer of  the  blocks,  it  is  said  that  his  good  faith  could  not 
protect  him  in  a  purely  civil  action,  since  his  act,  irrespective  of 
its  intent,  was  an  infringement  of  the  plaintiff's  trade  mark.  Ac- 
cordingly, the  defendants  were  jointly  condemned  to  the  pay- 
ment of  nominal  damages  and  all  the  costs  of  the  action.  This 
case  was  appealed  and  affirmed,  the  Appellate  Court  saying  that 
even  if  the  defendant  "Menier"  had  the  undeniable  right  to 
make  use  of  his  own  name,  he  could  not  make  use  of  it  in  a  way 
to  prejudice  the  rights  of  the  company  of  that  name,  by  em- 
ploying a  mark  which  was  only  a  counterfeit  of  that  company's 
mark.  (Societe  Menier  vs.  Menier,  et  al.,  Annales  de  la  Prop. 
Ind.,  1909,  p.  23.) 

Renewals. 

Where  a  trade  mark  legally  registered  in  France  was  not  re- 
newed at  the  expiration  of  the  term  of  fifteen  years  and  after 
the  termination  of  the  first  registration  was  registered  and  used 
by  another  party,  it  has  been  held  that  the  mark  of  the  first  reg- 
istrant no  longer  enjoys  protection  except  within  the  territory 
where  it  has  been  in  current  use,  in  other  words,  the  right  of 
priority  recognized  by  the  French  law  is  limited  to  that  extent. 
In  a  case  of  this  character,  a  mark  claimed  for  furniture  is  not 
entitled  to  protection  in  favor  of  the  first  user  in  a  city  where 
the  party  has  never  been  in  business  and  where  only  rare  sales 
have  been  made  without  the  mark  being  prominently  and  com- 
monly known  as  his.  (Guggenheim  vs.  David,  Ann.  de  la  Prop. 
Ind.,  1909,  p.  29.) 

The  Wrong  of  Refilling. 

By  judgment  of  the  Court  of  the  Seine,  it  has  been  held  that, 
where  a  dealer  refills  an  empty  bottle,  bearing  its  original  trade 
mark,  with  a  brandy  other  than  that  formerly  contained  therein, 
and  serves  it  from  the  bottle  to  his  customers,  he  is  guilty  of  in- 
fringement of  the  mark.  The  dealer  sought  to  justify  himself 
upon  the  ground  that  he  merely  filled  the  bottle  as  a  matter  of 
convenience;  and,  regardless  of  what  kind,  of  brandy  his  cus- 
tomers asked  for,  he  served  them  all  out  of  the  one  bottle. 
Nevertheless,  •  the  court  said  this  fact  did  not  excuse  him,  for 
his  acts  were  a  passing  off  of  another  brandy  under  the  trade 
mark  of  the  complainant.  (Guillan  vs.  Boyer,  Bulletin  Officiel 
de  la  Prop  Ind.,  1911,  p.  39.) 

Upon  the  like  facts,  the  Court  of  Beauvais  has  reached  the 
same  conclusion,  declaring  that  the  fraud  was  equivalent  to  a 
counterfeiting  of  the  trade  mark  and  was  an  application  thereof 
to  spurious  goods.  It  was  held,  furthermore,  that  the  mere 


FRANCE  199 

exposure  of  the  bottles  so  refilled  for  sale  constituted  a  putting 
of  the  product  upon  the  market,  within  the  meaning  of  the 
trade  mark  act.  (Societe  St.  Raphael  vs.  X,  Bulletin  Officiel  de 
la  Prop.  Ind.,  1911,  p.  40.) 

The  Civil  Court  of  Carcassonne  has  applied  the  same  princi- 
ple, in  the  case  of  a  defendant  prosecuted  for  refilling  beer 
bottles  bearing  the  original  trade  marks.  The  court  said,  the 
fact  that  the  bottles  bearing  the  trade  mark  had  been  filled  with 
beer  of  another  manufacture  and  were  in  the  defendant's  ware- 
house made  it  unnecessary  to  inquire  whether  any  had  actually 
been  sold,  since  they  would  undoubtedly  be  delivered  to  whom- 
soever should  present  himself  as  a  purchaser.  (Lauer  vs.  Las- 
salle  Castex,  Annales  de  la  Prop.  Ind.,  1911,  p.  136.) 

The  Name   of  a  Patented  Article. 

A  French  authority  on  Patents  says,  upon  the  expiration  of  a 
patent,  the  right  to  make  and,  sell  the  patented  article  takes  with 
it  the  right  to  use  the  name  under  which  it  has  been  known, 
provided  the  name  was  not  employed  as  a  trade  mark,  and  be 
not  so  used  by  the  later  comer  as  to  constitute  unfair  competi- 
tion. Otherwise  the  monoply  of  the  patent  would  be  indefinitely 
prolonged,  since  the  articles  manufactured  in  accordance  with 
the  invention  would  not  be  recognized  in  the  market,  if  sold 
under  a  different  name.  When  the  name  of  the  inventor  himself 
enters  into  the  designation  of  the  article,  the  question  is  a  diffi- 
cult one,  and  in  these  cases,  the  court  will  not  permit  a  third 
person  to  use  the  name  except  under  conditions  framed  to  pre- 
vent confusion. 

It  was  held  by  the  Court  of  Nancy,  in  1854,  that  a  designa- 
tion under  which  a  patented  article  had  been  known  by  the  in- 
ventor, a  designation  drawn  from  the  ordinary  language  and 
not  containing  the  name  of  the  inventor,  became  public  property, 
together  with  the  invention.  It  had  also  been  held  that  when, 
by  the  act  of  the  inventor  himself,  his  name  had  become  the 
essential  part  of  the  designation  of  a  product,  it  likewise  be- 
comes public  upon  the  expiration  of  the  patent.  On  the  other 
hand  the  use  of  the  name  of  the  inventor  by  another  than  the 
first  maker,  to  designate  a  formerly  patented  article,  if  it  cause 
confusion  of  the  product  with  that  of  the  original  manufacturer, 
is  unlawful.  It  seems  to  be  the  French  rule  that  when  used  by 
another  after  expiration  of  the  patent,  the  name  of  the  inventor 
must  be  accompanied  by  descriptive  words,  indicating  that  the 
article  is  made  according  to  his  patent.  The  whole  matter 
appears  to  turn  upon  the  ouestion,  whether  the  mark  or  name  in 
dispute  is  the  necessary  designation  of  the  product;  that  is,  the 
name  by  which  the  product  has  become  known  and  been  com- 
monly identified,  during  the  lifetime  of  the  patent.  If  so,  it 


2oo  FRANCE 

becomes  public  property.  If  not,  no  right  to  its  use  is  gained  by 
the  expiration  of  the  patent.  (Pouillet,  Brevets  d'Invention, 
Third  Ed.,  Sec.  327.)  (Pouillet  Marques  de  Fabrique,  Fourth 
Ed.,  Sec.  54.) 

A  decision  of  the  Court  of  Paris  in  October,  1910,  applies 
this  principle  in  the  case  of  a  proper  name,  the  further  use  of 
which  it  enjoined,  upon  the  ground  that  it  had  not  become, 
through  any  act  of  the  inventor,  the  usual  or  common  designa- 
tion of  the  product.  The  use  of  the  name  by  the  defendant  in 
that  case  was  without  any  qualification  or  explanatory  language, 
to  show  that  the  article  was  made  by  anyone  other  than  the 
original  maker  thereof.  (Leclanche  &  Co.,  vs.  Nouvelles  Gal- 
eries,  Annales  de  la  Prop.  Ind.,  1911,  p.  121.) 

Unfair  Competition. 

The  Civil  Court  of  Nevers  has  held  that  a  trade  name  con- 
sisting of  the  words  "Pastiles  Valda"  is  infringed  upon  by  the 
name  "Pastiles  genre  Valda"  or  in  other  word  "Pastiles  of  the 
Valda  Type."  It  is  held  that  the  use  of  the  mark  in  this  way  is 
likely  to  mislead  a  purchaser  as  to  the  origin  and  identity  of 
the  merchandise  sold,  and  that  such  use  of  the  name  constitutes 
unfair  competition.  (La  Defense  de  La  Propriete  Industrielle, 
1908,  p.  137.) 

Assignment. 

No  transfer  shall  be  valid  as  regards  third  parties  until  it  has 
been  registered  at  the  office  of  the  Secretary  of  the  Prefecture  of 
the  department  in  which  the  deed  was  executed. 

The  registration  of  all  deeds  made  in  the  department  of  the 
Seine,  however,  shall  be  effected  at  the  National  Office  of  Indus- 
trial Property. 

The  registration  of  transfers  and  of  all  other  deeds  making 
changes  shall  be  made  on  the  production  and  deposit  of  an  authen- 
tic extract  from  the  deed  of  transfer  or  change. 

A  copy  of  each  entry  of  registration,  together  with  the  extract 
from  the  deed  above  mentioned,  shall  be  forwarded  by  the 
Prefects  to  the  Minister  of  Agriculture  and  Commerce  within 
five  days  of  the  date  of  the  entry. 

Classification  of  Merchandise. 

CLASS    1.     AGRICULTURE  AND  HORTICULTURE. 

Live  stock.    Wool.    Forrage.    Grain.    Seeds.     Fruits  and 
Vegetables  (fresh  or  dried).    Trees,  shrubs  and  flowers  (cut 
or  growing).    Grafting.    Licorice  wood,  etc. 
CLASS    2.     PINS,  HOOKS  AND  NEEDLES. 
CLASS     3.     WEAPONS  AND  ORDNANCE. 

Weapons  and   equipment   for  military  use,   for  hunting, 
etc.    Also  ammunition  and  explosives. 


FRANCE  201 

CLASS      4.     SMOKERS'  ARTICLES. 

Cigars.    Cigarettes.    Tobacco.    Pipes.    Tinder  boxes,  etc. 
Not  including  cigarette  papers,  for  which  see  Class  53. 
CLASS     5.     NOTIONS. 

Small  toys  and  knick-knacks.  Not  including  those  pro- 
vided for  in  Classes  12  and  44.  Notions  excepting  those 
provided  for  in  Classes  8  and  11.  Goods  of  leather,  shell, 
Celluloid,  mother  of  pearl,  etc.  Brushes.  Travelers'  goods, 
etc.  Not  including  buttons,  for  which  see  Class  55. 
CLASS  6.  WOOD. 

Seasoned  lumber.     Wood  pulp.     Wooden  ware.     Cooper- 
age.    Baskets.     Wooden  handles,  stoppers,  etc. 
CLASS     7.     BEVERAGES. 

Beer.     Cider.    Table  waters.     Malt  ferments.     Salts,  etc., 
used   for  preparing  beverages.     Apparatus   for  home  pro- 
duction of  table  waters.    Not  including  articles  provided  for 
in  Classes  10,  19,  21,  27,  45,  59,  60,  72,  73. 
CLASS     8.     HOSIERY,  CORSETS  AND  SUNDRIES. 

Knitted,  goods.      Stockings.     Garters.      Corsets.      Corset 
covers.    Corset  stays.     Buckles.    Eyelets.     Hooks  and  eyes. 
Hair  pins,  etc.     (For  other  notions  see  Class  5.) 
CLASS    9.     CANDLES  AND  TAPERS. 

CLASS  10.     TEA,  COFFEE  AND  SUBSTITUTES  FOR  THE  SAME. 
CLASS  11.     CANES  AND  UMBRELLAS. 

Including  the  complete  articles  and  also  their  mountings 
and  trimmings. 
CLASS  12.    RUBBER  GOODS. 

Crude  rubber.     Products  for  waterproofing  cloth.     Rub- 
ber goods,  excepting  those  provided  for  in  Classes  14,  29  and 
42,  but  including  rubber  toys,  rubber  fabrics,  elastic  fabrics, 
etc. 
CLASS  13.     VEHICLES,  HARNESS,  ETC.      .  . 

Including  bicycles  and  whips. 
CLASS  14.     POTTERY  AND  GLASSWARE. 

Including  atomizers.     Not  including  articles  provided  for 
in  Classes  29  and  42. 
CLASS  15.     HATS,  MILLINERY  AND  NECKTIES. 

Caps.      Millinery    goods.      Feathers.      Artificial    flowers, 
etc.     Not  including  ribbons  for  which  see  Class  63. 
CLASS  16.     HEATING  AND  LIGHTING. 

Including  ovens,  foot  warmers, 'fuels  and  matches. 
CLASS  17.     FOOTWEAR. 
CLASS  18.     BUILDING  MATERIALS. 

Building  stone.  Marble.  Granite,  etc.  Lime.  Cement. 
Bricks.  Tiles.  Roofing  materials.  Not  including  lumbers 
for  which  see  Class  6. 


2O2  FRANCE 

CLASS  19.     CHOCOLATES. 

Including  cocoa,  etc. 

CLASS  20.     SHOE  POLISHES  AND  LEATHER  DRESSINGS. 
CLASS  21.     PASTRY  AND  CONFECTIONERY. 

Including  syrups  and  fruit  juices. 
CLASS  22.     PRESERVED  FOODS. 

Including  meats,  fish  and  vegetables,  canned  or  in  jars. 
CLASS  23.     COLORS,  VARNISHES,  WAXES,  PYROGRAPHY,  ETC. 

Including  paints,  driers,   red  lead,   stove  polish,   pumice 
stone,    sealing   wax,    paste,    etc.      Not    including   glue    for 
which  see  Class  59. 
CLASS  24.    CUTLERY. 

Including  razor  hones,  etc. 
CLASS  25.     HIDES  AND  PELTS. 
CLASS  26.    LACES  AND  NETS. 

Including  embroideries,  veils,  etc. 
CLASS  27.     BRANDIES. 
CLASS  28.     CLEANING  AND  POLISHING  MATERIALS. 

Cleaning  fluids,  pastes  and  powders  (excepting  those  pro- 
vided  for   in   Classes   20  and   23).      Impregnated  cleaning 
fabrics.    Polishing  papers  and  cloths,  etc. 
CLASS  29.     ELECTRICAL  APPARATUS. 

Including  insulators  of  gutta  percha  and  other  materials. 
CLASS  30.     INKS. 
CLASS  31.     FERTILIZERS. 
CLASS  32.     COTTON  THREAD. 

Including  braids  and  tapes. 
CLASS  33.    WOOLEN  YARN. 
CLASS  34.    LINEN  THREAD. 
CLASS  35.     SILK  THREAD. 

Including  silk  tapes,  artificial  silk,  etc. 
CLASS  36.     MISCELLANEOUS  THREAD. 

Including  threads  of  hemp,  ramie,  etc.     Also  threads  of 
mixed  materials. 
CLASS  37.     GLOVES. 
CLASS  38.     CLOTHING  AND  FIGURES  FOR  DISPLAYING  THE  SAME. 

Including   furs,  underwear,   gaiters,   etc.     Not  including 
.  articles  provided  for  in  Classes  8,  15,  26,  55  and  63. 
CLASS  39.     HOROLOGY,  JEWELRY  AND  PLATE. 

Precious  metals  in  ingots.     Objects  made  from  the  precious 
metals.     Precious  stones.     Pearls.    Artificial  gems.    Not  in- 
cluding jet  ornaments,  for  which  see  Class  55. 
CLASS  40.    LUBRICATING  OIL  AND  GREASE. 

Including  vaseline  which  is  not  perfumed  or  medicated. 


FRANCE  203 

CLASS  41.    VINEGAR  AND  TABLE  OIL. 
Including  oil  cakes. 

CLASS  42.     SURGICAL  INSTRUMENTS  AND  DRUGGISTS'  SUNDRIES. 
Including   absorbent   cotton,   bandages,   trusses,   syringes, 
orthopedic  apparatus,  dental  apparatus  and  supplies,  vapor 
baths,  sterilizing  apparatus,  nursing  bottles. 
CLASS  43.     MUSICAL     INSTRUMENTS.    AND     INSTRUMENTS     OF 
PRECISION. 

Including  physical  and  chemical  apparatus,  weights  and 
measures,   optical    instruments,   phonographs,   phonographic 
discs,  etc. 
CLASS  44.     TOYS  AND  GAMES. 

Not  including  articles  provided  for  in  Classes  5  and  12. 
CLASS  45.     SPIRITUOUS  LIQUORS. 

Grain  alcohol.     Beverages  containing  alcohol  and  sugar, 
excepting  as  provided  for  in  classes  7,  27,  72,  73. 
CLASS  46.     BEDDING,  FURNITURE  AND  FLOOR  COVERINGS. 

Including  tapestries,  window  shades,  ice  boxes.     Also  in- 
cluding articles  used  in  upholstery,  horse  hair,  feathers,  etc. 
CLASS  47.     SEWING  MACHINES. 

Including  plaiting  machines.     Also  parts  and  accessories. 
CLASS  48.     AGRICULTURAL  MACHINERY. 

Including  dairy  apparatus. 
CLASS  49.     MISCELLANEOUS   MACHINERY  AND  APPARATUS. 

Including  typewriters.     Also  including  miscellaneous  ma- 
chinery not  provided  for  in  Classes  7,  29,  47,  48,  57.     Also 
including  accessories  for  machines  coming  under  this  classi- 
fication. 
CLASS  50.     METALLURGY. 

Minerals.     Metals  in  the  form  of  ingots,  bars,  foil,  etc., 
excepting  precious  metals  for  which  see  Class  39. 
CLASS  51.     OBJECTS  OF  ART. 
CLASS  52.     BOOKS  AND  PAPER  GOODS. 

Books.     Pamphlets.     Maps.     Office  Supplies.     Paper,  not 
including  cigarette  papers,  for  which  see  Class  53.     Paper 
boxes.     Cartons. 
CLASS  53.     CIGARETTE  PAPERS. 
CLASS  54.     PERFUMERY. 

Including    perfumed    pastes    and    powders,    dentifrices, 
sachet    powders,    incense,    etc.      Not    including    soaps,    for 
which  see  Class  64. 
CLASS  55.     BUTTONS  AND  PASSEMENTERIE. 

Buttons  of  all  materials.     Cords.     Gold  or   silver  laces, 
braids  and  threads. 
CLASS  56.     FOOD  PRODUCTS  OF  FLOUR. 

Including  macaroni,  vermicelli,  noodles,  spaghetti,  etc. 


2O4  FRANCE 

CLASS  57.     PHOTOGRAPHY,  LITHOGRAPHY  AND  PRINTING. 

Photographs.  Picture  postal  cards.  Calendars.  Not  in- 
cluding- books,  etc.,  provided  for  in  Class  52.  Photographic 
apparatus  and  supolies.  Moving  picture  apparatus.  Litho- 
graphic stones.  Zinc  plates.  Electros,  etc.  Printing  ma- 
chinery. 

CLASS  58.     FOOD  PRODUCTS.     MISCELLANEOUS. 

Fresh,  salted  and  smoked  meats.  Bread.  Ginger  bread. 
Mustard.  Tapioca.  Sugar.  Milk.  Cheese.  Butter.  Eggs. 
Animal  foods,  excepting  as  provided  for  in  Class  1.  Not 
including  food  products  covered  by  Classes  1,  19,  21,  22,  41, 
56,  59,  60. 

CLASS  59.     CHEMICAL  PRODUCTS. 

Wine  making,  brewing,  etc.  Artificial  phosphates.  Gela- 
tines. Glue.  Starch.  Ignition  fuses.  Insecticides,  etc. 

CLASS  60.     PHARMACEUTICAL  PRODUCTS. 

Including  medicines,  remedies,  antiseptics,  etc.,  of  alj 
sorts,  excepting  those  covered  by  Class  61.  Also  including 
health  foods. 

CLASS  61.     VETERINARY  REMEDIES. 

CLASS  62.     TOOLS  AND  HARDWARE. 

Including  farming  implements,  mechanics'  tools,  plumb- 
ing goods,  house  furnishing  goods,  tinware,  wood  or  metal 
garden  furniture,  automatic  stoppers,  filters  with  their  ac- 
cessories, etc.  Not  including  articles  provided  for  in  Class 
65. 

CLASS  63.    RIBBONS. 
CLASS  64.     SOAPS. 

CLASS  65.     IRONWORKING  AND  LOCKSMITHING. 

Iron  work  of  -all  kinds.  Greenhouses.  Horseshoes. 
Horeshoe  nails.  Builders'  hardware,  including  locks. 

CLASS  66.     DYES.     SIZING  PREPARATIONS  AND  THE   CLEANING 

OF  FABRICS. 

CLASS  67.     COTTON  FABRICS. 
CLASS  68.    WOOLEN  FABRICS. 

CLASS  69.     LINEN  FABRICS.  ., 

CLASS  70.     SILK  FABRICS. 

CLASS  71.     MISCELLANEOUS  FABRICS, 

Including  mixed  goods,  velours,  etc. 

CLASS  72.    WINES. 

Including    all     wines,     excepting    those     of     Class     73. 
CLASS  73.     EFFERVESCENT  WINES. 

Including  champagnes  and  other  effervescent  wines. 


FRANCE  205 

CLASS  74.    MISCELLANEOUS  PRODUCTS. 

Including  ropes  and  cords,  fishing  tackle,  gymnastic  ap- 
paratus, sporting  goods,  ignition  tubes  for  explosion  en- 
gines, cloth  sacks,  wiping  cloths  for  machinery,  celluloid 
products,  not  specifically  covered,  in  other  classes,  etc. 

Laws  in  Force  to  Prevent  the  Sale  or  Importation  of  Goods 
Bearing  a  False  Indication  of   Origin. 

There  is  no  general  law  in  force  prohibiting  false  marks  of 
foreign  origin,  but  only  a  law  prohibiting  false  marks  of  French 
origin.  Goods  bearing  a  false  indication  of  French  origin  are 
seized  by  the  Customs  on  importation.  The  Decree  of  15th  of 
July,  1892,  approves  the  Arrangement  of  Madrid  of  1891,  which 
enacts  that  all  goods  bearing  a  false  indication  of  origin  in 
which  one  of  the  contracting  States  (or  a  place  situated  therein) 
is  indicated  as  the  country  or  place  of  origin,  shall  be  seized  on 
importation.  No  direct  action  is,  however,  taken  by  the  French 
authorities  as  regards  the  seizure  of  goods  bearing  false  indica- 
tions of  foreign  origin,  but  interested  parties,  advised  by  the 
Customs  or  by  the  Procurator  of  the  Republic,  have  the  right 
to  effect  seizure  and  to  proceed  before  the  courts.  A  foreigner 
being  an  interested  party,  could  bring  an  action  for  damages 
for  unfair  competition.  The  cost  of  an  action  recently  brought 
by  a  British  manufacturer  against  an  imitator  of  his  mark  is 
estimated  to  have  been  300  francs,  plus  solicitor's  fees.  No 
direct  steps  are  taken  by  the  French  authorities  to  prevent  the 
importation  of  goods  bearing  a  false  indication  of  origin.  There 
are  no  requirements  as  to  the  marking  of  imported  goods,  except 
as  regards  foreign  preserved  sardines,  vegetables,  plums  and 
prunes,  which  must  bear  an  indication  of  the  country  of  origin. 
Foreign  goods  of  any  kind  bearing  an  indication  likely  to  sug- 
gest French  origin  must,  to  avoid  seizure,  be  marked  with  the 
name  of  the  country  of  origin. 

Marking  Goods  :    "Marque  Deposee." 

French  Colonies  and  Protectorates. 

A  trade  mark  registration  in  France  extends  to  all  the  Col- 
onies but  not  to  any  Protectorates. 

The  following  is  a  list  of  the  French  Colonies : 
French  West  Africa  (Senegal,  French  Guinea,  Ivory  Coast, 
Dahomey,  Upper  Senegal  and  Niger).  French  Kongo,  Mada- 
gascar and  dependencies.  Mavotta  and  Comoro,  Reunion, 
French  Coast  of  Somali.  Indo-China  (Cochin  China,  Cambodia, 
Anam,  Tongking).  French  Indian  Establishment.  New  Cale- 
donia. French  Establishment  of  Oceanica.  Guadeloupe.  Mar- 
tinique. St.  Pierre  and  Miquelon.  French  Guiana. 


206  GAMBIA 


GAMBIA 

The  area  of  the  Colony  and  Protectorate  is  computed  at  4,000 
square  miles.  The  estimated  population  in  1911  (including  the 
Protectorate)  was  210,530  (Colony  only  8,807). 

MONEY,  WEIGHTS  AND  MEASURES — Same  as  Great  Britain. 

Law. 

Trade  Marks  Ordinance,  1900,  No.  6;  Ordinance  to  amend 
above  Ordinance  No.  14,  1902,  C.  I.,  Rules  under  Section  40  of 
Act  of  1900.  Vide  "Government  Gazette,"  April  30,  1901. 

Duration. 
Fourteen  years;  renewable. 

What  May  Be  Registered. 

A  registrable  trade  mark  must  consist  of  or  contain  at  least 
one  of  the  following  essential  particulars : 

1.  The  signature   (or,  in  the  case  of  an  incorporated  com- 
pany, the  name  written  in  some  particular  and  distinctive  man- 
ner), of  the  firm  applying  for  the  registration,  or  of  a  predeces- 
sor in  the  business;  or 

2.  An  invented  word  or  invented  words;  or 

3.  A  word  or  words  having  no  reference  to  the-  character  or 
quality  of  the  goods,  and,  not  being  a  geographical  name ;  or 

4.  A  mark  which  is  otherwise  of  a  distinctive  character  so 
as  to  be  adapted  to  distinguish  practically  the  goods  of  the  pro- 
prietor of  the  trade  mark  from  those  of  other  firms. 

Substantially  the  same  as  British  Act  of  1888. 

Requirements. 

Power  of  attorney ;  three  facsimiles  of  the  mark ;  full  state- 
ment of  the  goods  for  which  same  is  to  be  used,  as  well  as 
applicant's  address ;  and  one  electrotype. 

Government  Fees. 

On  application  for  registration  of  trade  mark  for  one  or  more 
articles  included  in  one  class,  10s ;  on  completion  £2.  Renewal 
fee  £1. 

Classification. 

Same  as  Great  Britain. 

Assignments. 
A  trade  mark  is  assignable  with  the  good  will  of  the  business. 


GERMANY  207 

« 

.     GERMANY 

The  Empire  of  Germany  comprises  a  population  of  64,710,172 
(Dec.  1st,  1910). 

The  Empire  consists  of  the  following  States,  viz:  The  King- 
doms of  Prussia,  Bavaria,  Saxony  and  Wurtemburg;  the  Grand 
Duchies  of  Baden,  Mecklenburg  Schwerin,  Hesse,  Oldenburg, 
Saxe- Weimar  and  Mecklenburg  Strelitz ;  the  Duchies  of  Bruns- 
wick, Saxe  Meiningen,  Anhalt,  Saxe  Coburg  Gotha  and  Saxe 
Altenburg;  the  Principalities  of  Waldeck  Lippe,  Schwarzburg 
Rudolstadt,  Schwarzburg  Sondershausen,  Reuss  Schleiz, 
Schaumburg  Lippe,  Reuss  Griez;  the  Free  Towns  of  Ham- 
burg, Lvibeck,  Bremen,  and  the  Reichsland  of  Alsace-Lorraine. 

The  Constitution  of  the  Empire  vests  the  supreme  power  in 
the  Emperor,  and  the  Government  consists  of  the  Federal  Coun- 
cil or  Bundesrath  and  the  Diet  or  Reichstag,  formed  by  mem- 
bers elected  from  each  of  the  States.  The  various  States  of  the 
Empire  have  each  its  separate  government,  making  its  own  laws 
and  controlling  its  own  revenue  and  expenditure,  except  all 
financial  matters  appertaining  to  the  Empire,  such  as  the  expendi- 
ture on  the  army,  which  has  to  be  voted  by  the  Reichstag. 

MONEY — The  monetary  unit  of  Germany  is  the  Reichsmark  of 
100  pfennige=ls.=24  cents  United  States. 

WEIGHTS  AND  MEASURES. — Germany  has  adopted  the  metrical 
system. 

Law. 

The  first  uniform  law  on  trade  marks  for  the  Empire  of 
Germany  was  that  of  November  30,  1874,  which,  however, 
proved  to  be  defective,  and  was  replaced  twenty  years  later  by 
the  present  Law  of  May  12,  1894  (supplemented  by  "regula- 
tions to  carry  the  same  into  effect"). 

Term. 

Ten  years ;  renewable. 

It  is  advisable  to  effect  re-registration  upon  the  anniversary  of 
the  original  registration  as  the  new  period  of  ten  years  will 
begin  to  run  from  the  date  of  the  renewed  application. 

Notice  of  cancellation  on  account  of  failure  to  renew  is  given 
to  the  proprietor  of  the  mark  by  the  Trade  Mark  Branch  of  the 
Patent  Office.  If  10  marks  fine  besides  the  renewal  fee  of  10 
marks,  or  20  marks  altogether,  be  paid  within  one  month  of  the 
delivery  of  the  notice,  then  the  renewal  will  be  considered  to 
have  been  properly  made  on  the  day  of  the  expiration  of  the 
former  registration.  But  even  after  this  time,  the  expired  mark 
can  nevertheless  be  again  registered  afresh  by  an  entirely  new 
application. 

Under  the  German  law  a  trade  mark  cancelled  by  reason  of 
the  expiration  of  the  period  of  ten  years  for  which  registration 


208  GERMANY 

can  be  made,  cannot  be  registered  within  two  years  thereafter 
without  the  consent  of  the  original  registrant.  This  practically 
gives  to  the  first  registrant  a  period  of  two  years  within  which 
he  may  renew  the  registration,  and  protects  him  against  the 
appropriation  of  his  mark  by  another  during  that  time,  although 
after  cancellation  of  the  mark,  no  remedies  under  the  statute  are 
available  to  its  owner.  (Art.  4.) 

Who  May  Register. 

Anyone  wishing  to  employ  a  trade  mark  in  connection  with  his 
business  to  distinguish  his  goods  from  those  of  others,  may 
make  application  for  the  entry  of  such  mark  in  the  Trade  Mark 
Register.  (Art.  1.) 

The  right  to  protection  is  secured  by  registration  only,  and  is 
independent  of  any  priority  in  the  use.  The  first  use*-  who 
neglects  to  have  his  mark  registered  in  Germany  is  not  in  posi- 
tion to  prevent  the  registration  thereof  for  a  similar  goods  by 
another  firm ;  nor  can  he  prevent  the  use  thereof  by  registrant, 
or  ask  for  cancellation  of  the  registration  after  it  is  made.  The 
registrant  of  a  trade  mark  can  prevent  the  prior  user  of  the  mark 
from  using  the  same  in  Germany,  and  may  have  goods  bearing 
that  mark  seized  upon  importation  into  Germany. 

The  Patent  Office  will  refuse  registration  of  a  trade  mark 
upon  an  application  filed  in  Germany  before  applicant  has  actu- 
ally secured  registration  in  his  home  country. 

The  Follonwg  Can  Not  Be  Registered  as  Trade  Marks. 

1.  Marks  consisting  exclusively  of  figures,  letters  or  words 
descriptive  of  the  manner,  time  and  place  of  production,  of  the 
purpose,  of  the  price,  or  of  the  proportions  by  weight  or  volume 
of  the  goods. 

2.  Marks  containing- home  or  foreign  state  coats  of  arms,  the 
coat  of  arms  of  a  German  territory,  of  a  German  community  or 
other  parochial  union. 

3.  Marks  containing  representations  calculated  to  cause  an- 
noyance, or  allegations  evidently  misleading  and  involving  the 
risk  of  deception. 

Mode  of  Application. 

The  application  for  registration  must  be  made  at  the  Patent 
Office,  Berlin.  A  written  request  for  registration  of  a  trade 
mark  is  signed  by  the  applicant  or  his  agent,  containing : 

1.  The  name,  address,  profession  and  establishment  of  the 
applicant. 

2.  A  full  description  of  the  mark,  and  this  is  especially  de- 
sirable when  the  mark  consists  of  a  word,  as,  in  this  case,  it 
should  be  stated  that  the  said  word  can  be  printed  or  otherwise 
shown    in    any   desired   characters,   protection   of   the   word   as 


GERMANY  209 

spoken  being  alone  desired;  statement  of  the  class  of  goods  upon 
which  the  mark  is  to  be  used  and  a  request  for  the  registration 
of  the  mark.  The  request  should  be  accompanied  by  a  repre- 
sentation of  the  mark  and,  if  necessary,  description  of  the  goods 
and  models  or  specimens  of  the  goods  bearing  the  mark. 

The  Patent  Office  examines  whether  the  earlier  marks  which 
could  be  confused  with  the  new  application  have  already  been 
registered  or  registration  for  such  applied  for.  If  existing  trade 
marks  are  discovered  the  proprietors  of  the  same  are  advised  of 
the  existence  of  the  new  application  and  opportunity  is  given  tp 
them  to  file  opposition  against  the  registration  of  the  new  trade 
mark.  If  no  opposition  is  raised  the  new  mark  is  registered 
without  any  further  difficulty.  Simultaneous  with  the  communi- 
cation to  the  proprietors  of  similar  trade  marks  the  Patent  Office 
advises  the  applicant  that  proceedings  according  to  Article  5  of 
the  law  concerning  trade  marks  have  commenced.  The  appli- 
cant upon  receipt  of  such  notice  can  abandon  or  maintain  the 
application  according  to  desire,  and  has,  moreover  the  right  to 
file  an  argument  setting  forth  the  differences  which  distinguish 
his  mark  from  those  opposed.  For  this  purpose  a  term  of  four 
weeks  is  allowed  by  the  Patent  Office.  When  opposition  is 
raised  by  the  proprietor  of  the  similar  trade  mark  the  Patent 
Office,  decides  whether  said  opposition  is  justifiable  and  the  re- 
jection of  the  new  application  consequently  necessary.  Should 
the  application  be  rejected  the  applicant  can  appeal  to  a  higher 
department  upon  payment  of  a  fee  of  M.  20.  The  application  is 
then  again  examined  by  the  Appeal  Department  to  ascertain 
whether  an  essentially  misleading  similarity  of  the  marks  in 
question  exists  and  decides  accordingly. 

When  an  application  is  not  accepted  M.  20  of  the  Government 
fee  of  M.  30.-  is  refunded  so  that  M.  10.-  remain  in  the  treasury 
of  the  Patent  Office  to  cover  the  expenses  of  the  examination. 

When  the  Patent  Office  has  decided  that  a  trade  mark  applica- 
tion is  acceptable,  the  applicant  is  requested,  to  file  an  electrotype 
of  the  mark,  not  exceeding  cm.  f>.5  in  length  and  breadth,  within 
a  prescribed  term.  For  exceptional  cases  where  clearness  ren- 
ders it  necessary  a  larger  electrotype  would  be  acceptable.  The 
electrotype  must  remain  in  the  possession  of  the  Patent  Office  as 
long  as  the  protection  exists.  A  certificate  of  the  registration 
containing  a  print  of  the  trade  mark  is  issued  to  the  applicant. 
The  trade  mark  is  moreover,  published,  in  the  Imperial  Gazette 
(Reichsanzeiger)  and  in  the  Trade  Marks  Journal. 

Requirements. 

Certified  copy  of  home  registration  legalized  by  a  German 
Consul ;  power  of  attorney :  five  copies  of  mark  and  one  elec- 
trotype. (Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

14 


2io  GERMANY 

Assignments. 

The  right  accruing  from  the  application  for  registration,  or 
from  the  registration  of  a  trade  mark,  descends  to  the  heirs  and 
may  be  transferred  to  others  by  agreement,  or  decree  in  case  of 
death.  The  right  can,  however,  only  be  transferred  to  others 
together  with  the  business  to  which  the  trade  mark  belongs.  The 
transfer  will  be  noted  in  the  Register  on  the  application  of  the 
legal  successor,  on  the  consent  of  the  person  entitled  to  the  mark 
being  proved.  If  the  person  entitled  to  the  mark  is  dead,  proof 
of  the  legality  of  the  succession  must  be  furnished, 

Until  the  transfer  has  been  noted  in  the  Register,  the  legal 
successor  cannot  substantiate  his  claim  to  the  rights  accruing 
from  the  registration  of  the  trade  mark. 

Notices  and  decisions  of  the  Patent  Office,  which  have  to  be 
sent  to  the  proprietor  of  the  mark,  must  always  be  addressed  to 
the  registered  proprietor.  If  the  proprietor  is  dead,  the  Patent 
Office  may  according  to  its  own  discretion,  consider  the  commu- 
nication as  having  been  duly  effected,  or  take  steps  to  discover 
the  heirs,  in  order  to  communicate  with  them.  (Art.  7.) 

Infringements  and  Penalties. 

Any  person  who,  knowingly  or  through  gross  negligence,  shall 
wrongfully  apply  to  goods  or  to  their  packing  or  wrappers,  or 
to  advertisements,  price  lists,  business  letters,  recommendations, 
bills  or  the  like,  the  name  or  the  firm  name  of  another,  or  a  trade 
mark  protected  according  to  this  law,  or  shall  deal  in  or  offer 
for  sale  goods,  thus  wrongfully  designated  is  bound  to  indemnify 
the  injured  party. 

If  the  deed  has  been  committed  knowingly,  the  perpetrator 
will  be  punished  by  a  fine  not  less  than  one  hundred  and  fifty 
marks  and  not  exceeding  five  thousand  marks  or  by  imprison- 
ment not  exceeding  six  months.  The  prosecution  only  takes 
place  on  petition.  The  withdrawal  of  the  petition  is  admissible. 

Any  person  who,  for  the  purpose  of  deceiving,  shall  apply  to 
goods  or  their  packing  or  wrappers,  or  to  advertisements,  price 
lists,  business  letters,  recommendations,  bills  or  the  like,  a  de- 
sign current  in  the  branch  as  the  mark  of  another  person  for 
similar  goods,  without  the  permission  of  such  other  person,  or 
any  person  who,  with  intent  to  deceive,  shall  deal  in,  or  offer 
for  sale  goods  thus  marked,  is  liable  to  a  fine  not  under  one 
hundred  marks  and  not  exceeding  three  thousand  marks  or  to 
imprisonment  not  exceeding  a  term  of  three  months.  The  prose- 
cution only  takes  place  on  petition.  A  withdrawal  of  the  peti- 
tion is  admissible. 

Any  person  who  incorrectly  applies  to  goods,  or  their  packing 
or  wrappers  or  to  advertisements,  price  lists,  business  letters,  rec- 
ommendations, bills  or  the  like,  a  state  coat  of  arms,  or  a  name 


GERMANY  211 

or  coat  of  arms  of  a  locality,  of  a  community  or  other  parochial 
body,  for  the  purpose  of  creating  an  erroneous  impression  re- 
specting- the  nature  and  value  of  the  said  goods,  or  any  person 
who  with  such  intent  shall  trade  in  or  offer  for  sale  goods  thus 
marked,  is  liable  to  a  fine  of  not  less  than  one  hundred  and  fifty 
marks  and  not  exceeding  five  thousand  marks  or  to  imprisonment 
for  a  term  not  exceeding  six  months. 

Import  and  Customs  House  Regulations. 

If  German  goods,  on  being  imported  into  or  on  transit  through 
a  foreign  country,  are  bound  to  contain  a  notification  showing 
their  German  origin,  or  if  the  same,  at  the  examination  at  the 
Customs  House,  in  respect  of  the  notification  of  the  goods,  are 
treated  less  favorably  than  the  goods  of  other  countries,  the 
Federal  Council  has  the  power  to  apply  corresponding  regula- 
tions to  the  foreign  goods  in  question,  on  their  import  into, 
or  transit  through  Germany  and  to  order  the  seizure  and  con- 
fiscation of  the  goods,  if  such  regulations  are  not  complied  with. 
The  seizure  will  be  effected  by  the  Board  of  Customs,  the  con- 
fiscation will  take  place  by  sentence  of  the  administrative  au- 
thorities. (Art.  459  of  the  Criminal  Procedure.) 

Exjunction  of  Trade  Marks. 

On  the  application  of  the  proprietor,  the  mark  will  be  expunged 
from  the  register  at  any  time. 

The  expunction  will  take  place  officially: 

1.  On  the  expiration  of  ten  years  from  the  date  of  the  regis- 
tration or  renewal  of  the  mark. 

2.  If  the  registration  of  the  mark  ought  to  have  been  refused. 

If  the  expunction  is  to  take  place  for  other  reasons  than  in  ac- 
cordance with  an  application  made  by  the  proprietor,  the  Patent 
Office  shall  give  the  latter  previous  notice  of  the  fact.  If  he  does 
not  oppose  within  one  month  from  the  receipt  of  the  notice,  the 
expunction  will  take  place.  If  he  opposes,  the  Patent  Office  will 
come  to  a  decision  on  the  case.  If  the  expunction  is  to  take  place 
in  consequence  of  the  expiration  of  the  term  of  ten  years,  such 
expunction  shall  not  be  carried  into  effect,  if  the  proprietor  of 
the  mark  shall,  within  one  month  from  the  receipt  of  the  notice 
of  expunction,  apply  for  a  renewal  of  the  registration  by  payment 
of  a  fee  of  ten  marks  in  addition  to  the  renewal  fee ;  the  renewal 
shall  then  be  considered  as  having  taken  place  on  the  date  of 
expiration  of  the  former  term. 

A  third  person  can  make  application  for  the  expunction  of  a 
mark. 

1.  If  the  mark  has  been  registered  to  him  for  the  same  goods, 
or  a  similar  class  of  goods,  on  the  ground  of  a  prior  application, 


212  GERMANY 

or  in  accordance  with  the  Law  for  the  Protection  of  Trade  Marks 
of  the  30th  of  November,  1874 ; 

2.  If  the  business  to  which  the  trade  mark  belongs,  is  no 
longer  carried  on  by  the  registered  proprietor ; 

3.  If  there  are  any  circumstances  to  show  that  the  mark  is 
misleading  and  involves  the  risk  of  deception. 

If  a  trade  mark  which  was  excluded  from  registration  under 
the  Law  for  the  Protection  of  Trade  Marks  of  November  30, 
1874,  has  been  acknowledged  in  the  branch  to  represent  goods 
of  a  certain  business,  until  the  enactment  of  the  present  law,  and 
in  the  event  of  such  mark  being  registered  by  another  person,  the 
proprietor  is  entitled,  until  the  1st  of  October,  1895,  to  apply  for 
the  expunction  of  such  mark.  If  the  application  for  expunction 
is  granted,  the  mark  may,  before,  expiration  of  the  term  provided 
for  by  Article  4,  paragraph  2,  be  entered  on  the  register  in  favor 
of  the  applicant. 

The  application  for  expunction  must  be  proved  before  a  court 
of  law,  action  being  taken  against  the  registered  proprietor,  or  if 
deceased  against  his  heirs. 

If  the  transfer  of  the  mark  to  another  person  has  taken  place 
before  or  after  the  commencement  of  the  action,  the  judgment 
given  in  view  of  the  case,  shall  have  effect  against  the  legal  suc- 
cessor and  may  be  executed  on  the  same.  The  capacity  of  a 
legal  successor  to  participate  in  the  suit  is  determined  according 
to  Article  G3  to  Article  66  and  Article  73  of  the  Civil  Law  Code. 

In  the  case  of  paragraph  1  No  2  (of  this  Article)  application 
for  expunction  may  be  filed  at  the  Patent  Office  in  the  first  place. 
The  Patent  Office  then  gives  the  person  registered  as  proprietor 
of  the  mark  notice  thereof.  If  the  same  does  not  oppose  the  ap- 
plication within  one  month  from  the  date  of  delivery  of  the  notice, 
the  expunction  takes"  place. 

If  opposition  is  raised,  the  applicant  has  the  option  of  making 
good  his  claim  to  the  expunction  before  a  court  of  law. 

Classification, 

1.  Products  of  agriculture,  forestry,  gardening  and  animal 
breeding,  also  of  fishing  and  hunting. 

2.  Remedies  and  bandage  materials  for  men  and  animals, 
drugs,  means  for  the  extermination  of  animals  and  plants,  pre- 
servatives, disinfectants. 

3.  Articles  of  clothing,  with  the  exception  of  fur  goods  (12) 
and  lace  (30).     (a)  Hats  and  other  headgear  and  adornments; 
(b)    shoes;    (c)    knitted  and  woven  goods;    (d}    miscellaneous 
(garments,  linen,  corsets,  suspenders,  neckties  and  the  like). 

4.  Lighting,  heating,  cooking  and  ventilating  apparatus  and 
implements. 

5.  Bristles  and  goods  made  of  bristles  (brushes, brooms, scrub- 


213 

bing  brushes,  paint  brushes),  also  combs,  sponges,  hair-dressing 
implements  and  the  like. 

6.  Chemical  products,  except  those  listed  under  Classes  2,  8, 
11,  13,  20,  34,  and  36,  also  raw  mineral  products,  except  those 
named  under  Class  37. 

7.  Materials  for  packing  and  stuffing,  heat-retaining  and  in- 
sulating means,  asbestos  goods,  waste. 

8.  Manure,  natural  and  artificial. 

9.  Iron,  steel,  copper  and  other  metals,  also  goods  made  of 
such  metals,  except  those  named  in  Classes  4,  17,  22,  23,  32,  33, 
35.     (a)   Metals,  raw  or  partially  worked;   (b)  cutlery   (knives, 
forks,  scythes,  sickles,  strawknives,  hatchets,  saws,  cutting  and 
thrusting  weapons),  and  tools  (files,  hammers,  anvil,  vises,  planes, 
augers  and   the  like)  ;    (c)    needles,   also   for  sewing  machines, 
stitching  needles,  pins,  hairpins,  fishhooks;   (d)   horseshoes  and 
horseshoe  nails;    (^castings,  enamel  and  tinware;    (/)    miscel- 
laneous metal  goods. 

10.  Vehicles  (wagons  of  all  kinds,  including  baby  carriages 
and  invalid's  carriages,  also  carriage  wheels  and  water  craft). 

11.  Colors,  except  painters'  colors  and  ink2  Class  32. 

12.  Skins,  hides,  leather,  pelts  and  furs. 

13.  Varnish,  lacquer,  rosin,  adhesive  materials,  wax,  polish- 
ing substances  and  the  like. 

14.  Yarn  and  thread,  string,  rope  of  fiber  and  drawn  metal. 

15.  Spinning  materials    (wool,  cotton,  flax,  hemp,   jute,  and 
the  like),  and.  cushion  stuffing   (horsehair,  seaweed,  India  fiber, 
bed  feathers  and  the  like). 

16.  Beverages:  (a)  beer;  (b)  wines  and  spirits;  (c)  mineral 
waters  and  carbonic  waters,  including  bath  waters,  also  spring 
and  bath  salts. 

17.  Gold  and  silver  ware,  real  and  imitation  jewelry  of  every 
kind,  plated  ware,  argentan,  "newsilver"  ware,  Britannia  ware, 
nickel  ware  and  aluminum  ware. 

18.  Gum,  india  rubber  and  gutta  percha  wares,  also  the  raw 
materials. 

19.  Hand  and  traveling  appliances  (umbrellas,  canes,  trunks, 
portmanteaux  and  the  like). 

20.  Heating   and    lighting    substances,    also    unguents,     (a) 
Coal,  peat,  firewood,  coke,  briquettes,  coal-kindlers ;  (&)  fats  and 
oils,  except  those  intended  for  food  (26  b),  also  unguents:  (c) 
candles  and  night  lights,  also  wicks. 

21.  Wooden,   cork,   horn,   tortoise,    ivory,   meerschaum,   cel- 
luloid and  similar  wares,  turners'  and  carvers'  wares. 

22.  Instruments  and  apparatus,  except  musical   instruments, 
Class  25,  and  timepieces,  Class  40.     (a)  Medical  and.  dental  ap- 
paratus, pharmaceutical,  orthopaedic,  gymnastic  bandages,  disin- 
fecting apparatus  and  the  like;   (6)   physical  and . chemical,  op- 


214  GERMANY 

tical,  goedetic,  nautical  and  surveying  instruments,  balances,  con- 
trolling apparatus  and  the  like. 

23.  Machines,    machine    parts    and    implements,    including 
household  and  kitchen  utensils. 

24.  Furniture  and  upholstery. 

25.  Musical  instruments. 

26.  Nutritious  articles  and  articles  of  luxury,  except  bever- 
ages, Class  10,  and  tobacco,  Class  38.     (a)  Meat  products,  meat 
extracts,  conserves,  including  fruit  juices,  jellies  and  delicates- 
sen; (b)   eggs,  milk,  butter,  cheese,  artificial  butter,  edible  fats 
and  oils;   (c)   colonial  products   (coffee  substitutes,  tea,  sugar, 
meal,  spices,  vinegar  and  the  like)  ;  (d)  cocoa,  chocolate,  sweet- 
meats, also  bakers'  and  confectioners'  goods,  including  yeast  and 
baking  powder;   (e)   miscellaneous  articles  of  nourishment  and 
luxury,  also  for  animals,  and  natural  and  artificial  ice. 

27.  Paper,  pasteboard,  boards,  articles  of  paper  and  paste- 
board, raw  and  partly  prepared  materials  for  the  manufacture  of 
paper    (rags,   old  paper,  cellular  material,   wood   pulp  and  the 
like). 

28.  Photographic  and   lithographic  materials,   also  miscella- 
neous materials  for  the  various  arts  and  printing. 

29.  Porcelain,  clay  and  other  earthenware,  glass  and  glass- 
ware, glazed  ware. 

30.  Lace  and  tapestry  work,  also  lace  and  net. 

31.  Saddlery,  harness  and  purses,  leather  ware  not  previously 
mentioned,  also  albums  and  picture  frames. 

32.  Writing,  drawing  and  painting  articles,  including  ink,  In- 
dia ink  and  painting  colors,  office  appliances,  including  business 
books,  school  appliances,  teaching  supplies. 

33.  Firearms  and  projectiles. 

34.  Soaps,  cleaning  and  polishing  materials,  rust  preventa- 
tives,  washing  substances,  perfumery  and  toilet  accessories. 

35.  Games  and  sporting  goods. 

36.  Blasting   materials,   priming   materials,   pyrotechnic   ma- 
terials. 

37.  Stone,  natural  and  artificial,  and  other  building  materials 
(cement,  plaster,  lime,  gravel,  asphalt,  tar  pitch,  piping  systems 
and  roof  papers). 

38.  Tobacco  manufactures    (cigars,  cigarettes,  smoking  and 
chewing  tobacco,   snuff). 

39.  Carpets  and  other  floor  coverings,  table  covers,  bed  cov- 
ers, curtains,  blinds,  portieres. 

40.  Timepieces. 

41.  Woven     goods,     including    ribbons;     (a)     velvets     and 
plushes;    (b)    linens,  half-linens  and  wash  goods;    (c)   miscel- 
laneous woven  goods   (silks,  woolens,  cottons,  etc.). 

42.  Miscellaneous    wares.      Under    this    head    are    classed 


GERMANY  215 

-marks  which  are  intended  for  a  large  number  of  diversified 
goods  (principally  export  and  commission  articles). 

Class  42  has  long  been  a  subject  of  criticism  by  those  who 
have  had  experience  of  its  operation. 

Registration  in  Class  42  will  cover  goods  in  any  or  all  of  the 
other  classes.  Formerly  the  applicant  registered  in  this  class 
for  goods  which  properly  belonged  in  several  of  the  41  preced- 
ing classes  and  instead  of  registering  separately  in  the  several 
classes  he  registered  only  in  Class  42,  and  by  registering  in 
Class  42  the  registrant  was  able  to  cover  a  multitude  of  goods 
upon  which  the  mark  was  not  used,  the  fact  is  he  had  no  in- 
tention of  using  the  mark,  thereby  excluding  from  the  market 
others  who  had  used  the  mark  on  their  goods  but  failed  to 
register. 

The  Patent  Office  now  requires  the  applicant  to  state  the 
character  of  business  in  connection  with  which  he  is  using  the 
trade  mark  and  keeping  strictly  within  the  limits.  It  requires 
proof  from  the  applicant  that  he  is,  in  fact,  dealing  in  the  goods 
which  he  attempted  to  cover  in  his  application.  This  procedure 
has  met  the  entire  approval  of  the  section  of  appeals  of  the 
Office.  (Blatt  fuer  Patent,  Muster  und  Zeichenwesen,  1908, 
p.  214.) 

Law  Against  Unfair  Competition  of  June  7,  1909. 

Any  person  who,  for  the  purpose  of  competition,  commits  in 
business,  acts  contrary  to  honest  usages,  may  be  enjoined  from 
the  continuance  of  said  acts  and  held  for  damages.  (Art.  1.) 

Whoever  in  public  announcements  or  in  communications 
which  are  intended  for  a  large  circle  of  persons,  makes,  espec- 
ially in  regard  to  commercial  conditions,  in  regard  to  the  nature, 
the  origin,  the  mode  of  manufacture  or  the  price  of  merchan- 
dise or  industrial  services,  in  regard  to  the  manner  or  source 
of  acquisition  of  merchandise,  in  regard  to  the  possession  of 
awards  of  honor,  in  regard  to  the  cause  or  purpose  of  the  sale, 
or  in  regard  to  the  amount  of  stock  on  hand,  false  statements  of 
such  a  nature  as  to  present  the  appearance  of  an  especially  favor- 
able offer  can  be  enjoined  to  discontinue  the  false  statements. 
(Art.  3.) 

Whoever,  with  the  intention  of  presenting  the  appearance  of 
an  especially  favorable  offer,  in  public  announcements  or  com- 
munications which  are  intended  for  a  large  circle  of  persons 
makes  in  regard  to  commercial  conditions,  especially  in  regard 
to  the  nature,  the  origin,  the  manner  of  manufacture  or  the 
price  of  merchandise  or  industrial  services,  in  regard  to  the 
manner  or  source  of  acquisition  of  merchandise,  in  regard  to 
the  possession  of  awards  of  honor,  in  regard  to  the  cause  or 
purpose  of  the  sale  or  in  regard  to  the  amount  of  stock  on 


216  GERMANY 

hand,  statements  which  he  knows  to  be  false  and  of  such  a 
nature  as  to  induce  error,  shall  be  punished  by  imprisonment 
for  a  term  not  exceeding  one  year  and  with  a  fine  not  exceeding 
five  thousand  marks,  or  by  one  of  these  penalties. 

If  the  false  statements  indicated  in  the  paragraph  preceding 
are  made  by  an  employe  or  an  agent  of  a  commercial  enterprise, 
the  proprietor  or  director  of  the  enterprise  is  liable  to  punish- 
ment, together  with  the  employe  or  the  agent,  if  he  had  cog- 
nizance of  the  matter.  (Art.  4.) 

He  is  liable  to  imprisonment  not  exceeding  one  year  and  to  a 
fine  not  exceeding  five  thousand  marks  or  to  one  of  these 
penalties,  who,  after  having  announced  a  liquidation  sale  of 
merchandise,  places  on  sale  merchandise  which  has  been  pro- 
duced solely  for  the  liquidation  sale  (known  as  the  Vorschieben 
oder  Nachschieben  von  Waren).  (Art.  8.) 

A  prison  sentence  not  to  exceed  one  year  and  a  fine  not  to 
exceed  five  thousand  marks  shall,  provided,  a  more  severe 
punishment  is  not  prescribed  by  other  provisions,  be  imposed 
on  him  who,  in  the  course  of  business  and  for  the  purposes  of 
competition,  offers,  promises  or  awards  presents  or  other  in- 
ducements to  an  employe  or  agent  of  an  industrial  enterprise 
in  order  to  obtain  for  himself  or  for  a  third  party  by  means  of 
unfair  acts  on  the  part  of  the  employe  or  agent  an  advantage 
in  the  acquisition  of  merchandise  or  industrial  service. 

The  same  penalty  is  imposed  upon  the  employe  or  agent  of 
an  industrial  establishment,  who,  in  the  course  of  business, 
solicits,  allows  to  be  promised  to  him  or  accepts  presents  or 
other  inducements  for  which  he  is  to  procure  for  another  by 
means  of  unfair  acts  a  competitive  advantage  in  the  acquisition 
of  merchandise  or  industrial  service.  (Art.  12.) 

Whoever  for  the  purpose  of  competition  alleges  or  circulates, 
relative  to  the  business  of  another  party,  relative  to  the  pro- 
prietor or  manager  of  the  business,  relative  to  the  goods  or 
industrial  service  of  another,  facts  of  such  a  nature  as  to  preju- 
dice the  conduct  of  the  business  or  the  credit  of  the  proprietor, 
is,  provided  the  truth  of  the  facts  cannot  be  proved,  liable  to 
the  injured  party  for  damages.  The  injured  party  can  also 
claim  an  injunction  against  the  repetition  of  the  assertion  or 
circulation  of  such  facts. 

If  it  is  a  question  of  confidential  communications  and  if  the 
party  making  the  communication  or  the  recipient  thereof  has  a 
justifiable  interest  in  same,  the  action  for  discontinuance  is  only 
admissible  if  the  facts  alleged  or  circulated  are  contrary  to  the 
truth.  An  action  for  damages  can  only  be  brought  if  the  party 
making  the  communication  knew  or  should  have  known  the 
falsity  of  the  facts  alleged.  (Art.  14.) 

Whoever,  against  his  better  knowledge,  alleges  or  circulates 
facts  relative  to  the  business  of  another,  relative  to  the  person 


GERMANY  217 

of  the  proprietor  or  the  manager  of  the  business,  to  the  goods 
or  industrial  service  of  another,  facts,  contrary  to  the  truth,  and 
of  such  a  nature  as  to  prejudice  the  conduct  of  the  business, 
shall  be  punished  by  imprisonment  not  exceeding  one  year  and 
by  a  fine  not  exceeding  five  thousand  marks  or  by  one  of  these 
penalties. 

If  the  facts  mentioned  in  paragraph  1  are  alleged  or  circu- 
lated by  an  employe  or  agent  of  an  industrial  establishment,  the 
proprietor  of  the  establishment  is  liable  together  with  the  em- 
ploye or  agent,  if  the  act  was  committed  with  his  knowledge. 
(Art.  15.  ) 

A  prison  sentence  not  to  exceed  one  year,  and  a  fine  not  to 
exceed  five  thousand  marks,  or  one  of  these  penalties  shall  be 
inflicted,  on  any  employe,  workman,  or  apprentice  of  an  es- 
tablishment, who,  unauthorized,  for  the  purpose  of  competition, 
or  with  the  intention  of  injuring  the  proprietor  of  the  establish- 
ment, communicates  to  a  third  party,  during  the  term  of  his  en- 
gagement, industrial  or  commercial  secrets  which  have  been  en- 
trusted to  him  on  account  of  his  engagement,  or  which  are  other- 
wise accessible  to  him. 

The  same  penalty  shall  be  imposed  upon  him  who  profits  by 
or  communicates  to  third  parties,  for  the  purposes  of  competi- 
tion, industrial  or  commercial  secrets,  knowledge  of  which  he 
has  gained  through  the  communications  named  in  paragraph  1, 
or  through  his  own  act  violating  the  law  and  good  morals. 
(Art.  17.) 

Laws  in  Force  to  Prevent  the  Sale   or  Importation,  of  Goods 
Bearing  a  False  Indication  of  Origin, 

Section  14  of  the  Trade  Mark  Law  of  1894  prohibits  the 
wrongful  application  to  goods  of  the  trade  name  of  another 
party  or  of  a  registered  trade  mark,  as  well  as  the  placing  on  the 
market  or  offering  for  sale  of  goods  thus  marked.  Trade  names 
of  persons  residing  in  foreign  countries  enjoy  this  protection 
without  necessity  of  registration.  Section  15  of  the  law  af- 
fords protection  against  false  trade  descriptions  and  Section  16 
prohibits  the  wrongful  application  to  goods  of  the  name  of  a 
place  or  district  as  well  as  the  offering  for  sale  of  goods  so 
marked.  Under  the  provisions  of  the  Law  against  Unfair  Com- 
petition, 1909,  "Any  person  taking  immoral  action  in  commer- 
cial transactions  for  the  purpose  of  competition  can  be  made  to 
discontinue  such  action  and  to  pay  compensation."  This  clause 
covers  cases  of  false  indications  of  origin.  Proceedings  may  be 
taken  against  persons  in  respect  of  false  indications  of  origin 
either  by  means  of  a  civil  action  before  the  ordinary  courts  or 
by  means  of  criminal  proceedings.  Criminal  proceedings,  ex- 
cept under  Section  16  of  the  Trade  Marks  Law,  can  only  be  in- 


218  GERMANY 

stituted  on  the  demand  of  injured  parties.  No  special  regulations 
are  in  force  for  the  prevention  of  importation  of  goods  bearing  a 
false  indication  of  origin,  but  goods  bearing  falsified  German  trade 
marks  may  be  seized  on  importation.  No  provisions  have  so  far 
been  laid  down  requiring  that  imported  foreign  goods  must 
bear  an  indication  of  the  place  of  origin  except  in  the  case  of 
sparkling  wines  and  brandy ;  but  a  section  of  the  Trade  Marks 
Law,  1894,  authorizes  the  Federal  Council  to  retaliate,  should 
any  other  country  impose  any  conditions  .as  to  the  marking  on 
goods  of  German  origin.  Marking  Goods :  "Schutzmarke"  or 
"Eingetragene  Schutzmarke." 

DECISIONS. 
False  Marks  of  Origin. 

A  decision  of  the  German  Patent  Office,  passing  upon  an 
application  for  the  registration  of  a  trade  mark  for  "Egyptian 
Cigarettes"  of  German  manufacture  gives  a  view  of  the  posi- 
tion taken  by  the  Office  in  such  cases,  and  of  the  manner  in 
which  it  proceeds.  The  designation  of  the  German  manu- 
factured goods  as  "Egyptian  Cigarettes,'  led  the  Patent  Office 
to  inquire  into  the  question  whether  these  words  were  under- 
stood in  the  market  as  a  designation  of  the  place  of  manufac- 
ture, or  whether,  as  was  contended  by  the  applicant,  they  simply 
indicated  certain  peculiarities  of  form,  flavor  and  aroma.  To 
this  end,  the  trade  mark  section  of  the  Patent  Office,  on  its  own 
initiative,  sent  out  an  inquiry  to  various  chambers  of  commerce, 
firms  and  corporations,  inquiring  from  them  whether  the  words 
"Egyptian  Cigarettes"  as  a  designation,  had  lost  their  meaning 
as  an  indication  of  the  geographical  origin  of  the  goods  and 
had  become  a  mere  indication  of  quality.  Although  a  large 
number  of  the  parties  interrogated  took  the  latter  view  of  the 
meaning  of  the  term,  the  majority  replied  that  the  term  indicated 
to  the  purchasing  public  goods  of  Egyptian  manufacture.  Act- 
ing upon  this  view,  the  Patent  Office  rejected  the  application 
upon  the  ground  that  the  term  as  applied  to  cigarettes  manu- 
factured in  Germany,  was  one  calculated  to  deceive  the  public 
with  respect  to  the  origin  of  the  goods.  This  decision  was  af- 
terwards affirmed  upon  appeal  by  the  section  of  appeals,  upon  the 
same  ground.  (Blatt  fuer  Patent,  Muster  und  Zeichenwesen, 
1908,  p.  297.) 

Commercial  Names. 

An  American  firm,  the  American  Optical  Company,  manu- 
factured eyeglasses  and  other  optical  goods  for  sale  in  Germany. 
In  1908,  a  German  corporation  was  organized  under  the  name, 


GERMANY  219 

"American  Optical  Co. — Thompson  &  Schilling."  Thereafter, 
the  German  corporation  inserted  advertisements  in  newspapers 
under  the  name,  "American  Optical  Co.,"  without  the  addition  to 
the  words  "Thompson  &  Schilling."  Their  envelopes  were 
printed  in  the  same  way,  and  their  letterheads  contained  the 
name,  "American  Optical  Co.,"  in  large  letters  with  the  addition 
"Thompson  &  Schilling"  in  small  type. 

The  American  corporation  brought  an  action  to  enjoin  these 
acts  of  unfair  competition,  and  to  prevent  the  further  use  of  the 
name,  "American  Optical  Co.,"  either  with  or  without  the  addi- 
tion of  the  words  "Thompson  &  Schilling,"  unless  printed  so  as 
to  be  clearly  distinguishable  from  its  corporate  name. 

The  Supreme  Court  overruling  the  courts  of  first  and  second 
instance,  holds  that  the  plaintiff  should  have  the  relief  sought.  It 
finds  that  the  plaintiff  is  legally  entitled  in  the  United  States  to 
the  use  of  the  firm  name  American  Optical  Company.  That 
under  the  provisons  of  the  International  Convention  of  1883 
and  of  the  additional  acts  of  December  14,  1900,  the  citizens  of 
any  country,  a  party  to  the  convention,  are  entitled  to  enjoy  in 
all  the  other  states  of  the  union  the  protection  accorded  against 
unfair  competition  to  citizens  of  that  country.  The  American 
corporation  can  accordingly  claim  full  protection  against  unfair 
competition  in  the  enjoyment  of  its  trade  throughout  Germany, 
although  it  has  not  its  main  establishment  there.  Inasmuch  as 
the  acts  of  the  defendant  are  such  as  are  punishable  under  the 
German  law  against  unfair  competition,  it  does  not  matter 
whether  the  plaintiff's  firm  name  is  unique,  or  arbitrary,  or  de- 
scriptive of  the  business,  or  whether  it  is  well  enough  known  to 
the  German  public  to  be  recognized  as  the  designation  of  the 
plaintiff.  As  to  that  the  court  said,  it  is  enough  if  the  use  by 
the  defendant  would  deceive  a  small  part  of  the  public.  The 
only  question  is  one  of  priority  of  use.  The  plaintiff,  by  prior 
appropriation,  acquired  the  right  to  protection  against  the  un- 
lawful use  thereof  by  another,  whether  the  public  had  common 
knowledge  of  the  existence  of  that  company  or  not.  Moreover, 
the  intent  of  the  defendant  to  deceive  was  fuly  evidenced  by 
the  omission  of  the  words  ''Thompson  &  Schilling"  in  the  use 
of  its  name,  and  in  the  application  thereof  to  the  letterheads  in 
a  type  much  smaller  than  the  first  part  of  the  name.  The  de- 
cision of  the  lower  courts  was  held  to  be  erroneous,  and  was 
reversed,  and  relief  granted  to  plaintiff  as  claimed.  (Gewer- 
blicher  Rechtsschutz  und.  Urheberrecht,  1911,  p.  148.) 


A  proper  name  is  registrable  as  a  trade  mark  in  Germany  if  it 
be  the  name  of  the  applicant  or  of  some  predecessor  in  business, 
or  have  likewise  some  bona  fide  relation  to  the  goods  to  which 


22O  GERMANY 

it  is  applied.  But  a  name,  not  that  of  the  applicant,  is  not 
registrable  as  a  trade  mark,  merely  upon  the  consent  of  its 
owner,  unless  such  a  connection  be  shown  between  the  name 
and  the  goods. 


Section  13  of  the  German  trade  mark  law  provides  that  the 
registration  of  a  trade  mark  shall  not  prevent  anyone  from 
using  his  name,  firm  name,  address  or  similar  descriptive  matter 
upon  goods  of  his  manufacture  or  upon  the  package  or  wrapper 
thereof,  or  from  making  use  of  such  matter  in  his  trade.  The 
Reichsgericht  has  held  that  this  section,  however,  has  no  ref- 
erence to  the  question  of  the  resemblance  of  one  trade  mark  to 
another.  It  protects  only  the  marking  of  goods  in  the  manner 
designated,  and  merely  secures  to  every  man  the  right  to  the 
use  of  his  name,  or  firm  name  in  spite  of  the  registration  of  a 
trade  mark  by  another.  It  does  not  give  any  absolute  right  to 
use  either  his  own  name  or  the  name  of  his  firm,  alone  or  in 
connection  with  other  words,  in  the  manner  or  form  of  a  trade 
mark  and  will  not  enable  him  to  register  his  own  name,  or  his 
firm  name,  as  a  trade  mark,  alone,  or  in  connection  with  other 
features,  after  the  registration  by  another  of  a  trade  mark  that 
already  includes  such  name  or  names.  The  existence  of  two 
similar  trade  marks  upon  the  register  for  the  same  or  for  similar 
goods  is  contrary  to  the  provisions  of  the  trade  mark  law. 
(Zeitschrift  fuer  Industrierecht,  1907,  p.  273.) 

Descriptive  Terms. 

The  registrability  of.  a  trade  mark  derived  from  a  foreign 
language,  in  Germany,  is  dependent  upon  the  question  of  how 
the  term  would  be  understood  commonly  in  German  trade 
circles. 

The  word  "Sorpresa,"  the  Spanish  equivalent  of  the  word 
"surprise,"  is  not  registrable  as  a  trade  mark,  for  the  reason  that 
it  is  descriptive,  conveying  the  idea  of  the  surprising  superiority 
of  the  goods  to  which  it  was  applied.  The  section  of  appeals  of 
the  Patent  Office  had  previously,  in  many  cases,  rejected  the 
English  equivalent  of  the  word  "Surprise"  upon  the  same 
ground.  (Blatt  fuer  Patent,  Muster,  und  Zeichenwesen,  1909, 
p.  33.) 

The  word  "Teutsch"  is  not  registrable  as  a  trade  mark,  be- 
cause it  so  closely  resembles  the  word  "Deutsch"  (German)  as 
to  be  likely  to  be  confused  with  it  and  is  therefore,  to  be  re- 
garded as  its  equivalent  so  far  as  the  question  of  registrability 
is  concerned,  and  becomes,  therefore,  a  mere  mark  of  geographi- 


GERMANY  221 

cal  origin.  (Blatt  fuer  Patent,  Muster,  und  Zeichenwesen,  1909, 
p.  34.) 

The  section  of  appeals  of  the  German  Patent  Office  holds  that 
the  word  trade  mark,  "Bergsteiger,"  "Mountain  Climber,"  is  a 
descriptive  term,  when  applied  to  tires.  The  applicant  for  re'g- 
istration  contended  that,  inasmuch  as  wheeled  vehicles  could  not 
possibly  be  used  for  mountain  climbing,  there  was  no  descriptive 
force  in  the  term  as  applied  to  tires ;  but  the  Patent  Office  points 
out,  that  there  is  no  scarcity  of  mountain  roads  accessible  to 
wheeled  vehicles  and  the  natural  presumption  of  the  purchaser 
would  be,  that  the  name  was  meant  to  indicate  a  tire  especially 
adapted  for  such  rough  and  difficult  travel  as  might  be  encoun- 
tered in  a  mountainous  country,  that  is,  a  tire  of  special  dura- 
bility, or  one  less  likely  to  slip,  or  to  be  punctured.  (Mitteil- 
ungen  vom  Verband  deutscher  Patentanwalte,  1910,  p.  132.) 

The  Patent  Office  refused  registration  to  the  word  "Boudoir" 
for  smoking  tobacco  and  cigarette  paper,  as  descriptive.  On  the 
other  hand,  the  words  "Excelsior  Fix"  for  pneumatic  tubes  and 
tires  were  allowed  registration,  notwithstanding  the  fact  that 
the  word  "Excelsior"  alone  is  held  to  be  not  registrable.  The 
word  "Autumn"  for  soap,  washing  and  cleaning  preparations 
was  rejected  because,  the  Office  said,  it  indicated  the  season  in 
which  the  goods  were  produced.  Upon  proof,  however,  that  no 
soap  factory  was  exclusively  run  in  the  fall,  the  mark  was 
registered.  The  word  "Una"  was  rejected  for  talking  machines, 
because,  in  Italian,  the  word  means  "for  one  voice."  The  word 
"Montero"  was  refused  registration  for  cigarettes  because  it  is 
the  Spanish  equivalent  of  the  word  "hunter"  and  therefore  a 
descriptive  term.  The  word  "Turm"  (German  "tower")  was 
refused  registration  for  lamps  and  illuminating  appliances  be- 
cause towers,  from  time  immemorial,  had  been  used  as  beacons. 
The  words  "Queen  Quality"  were  rejected  because  of  a  similar- 
ity in  meaning  to  the  word  ''Regina."  (Mitteilungen  vom  Ver- 
band deutscher  Patentanwalte,  1911,  p.  95.) 

Trade  Marks  "Record"  and  "Record-Breaker." 

The  owner  of  the  former  mark,  the  registrant  thereof,  con- 
tended that  the  words  were  alike  in  significance,  in  sound,  and 
in  the  impression  which  they  made  upon  the  hearer,  and  that  for 
that  reason  there  was  such  liability  to  confusion  as  constituted 
infringement.  The  court,  however,  held  that  there  was  no  such 
similarity,  saying  that  in  the  compound  word  "Record- 
Breaker,"  the  word  "Record"  was  not  the  prominent  feature,  the 
latter  portion  of  the  word  receiving  the  emphasis,  not  only  in 
pronunciation  but  in  thought,  the  word  not  indicating  a  higher 
degree  of  that  quality  indicated  by  the  word  "Record,"  but  an 
entirely  independent  standard  of  excellence.  These  considera- 
tions, added  to  the  dissimilarity  of  the  words  in  appearance  and 


222  GERMANY 

in  sound,  it  was  held,  removed  any  possibility  of  confusion  be- 
tween them.     (Zeitschrift  fuer  Industrierecht,  1906,  p.  191.) 

Cancellation  of  a  Mark. 

A  German  manufacturer  of  liquors  had  several  years  ago 
made  application  for  the  registration  of  a  mark  consisting  essen- 
tially of  the  word  "Muskowiter."  Registration  was  refused  upon 
the  ground  that  the  word  was,  in  a  sense,  a  geographical  term, 
being  the  ordinary  designation  for  the  inhabitants  of  Moscow 
and  for  the  Russian  people  generally.  Notwithstanding  this  re- 
fusal, the  manufacturer  continued  in  the  use  of  his  mark  upon 
his  goods.  Thereafter,  a  competing  house  in  south  Germany 
made  application  for  the  registration  of  the  same  word  as  a 
trade  mark,  and  this  time  it  was  admitted  to  registration  with- 
out protest.  The  former  manufacturer  then  immediately  ap- 
plied to  have  this  mark  cancelled,  but  his  application  was  re- 
fused by  the  court  of  first  instance.  An  appeal  having  been 
taken,  the  appellate  court  sustained  the  appeal,  and  ordered  the 
cancellation  of  the  mark,  holding  that  it  was  contrary  to  the 
interests  of  the  public  that  a  mark  once  rejected  as  unregistra- 
ble,  should  be  thereafter  registered  in  favor  of  a  third  party; 
since  it  often  happened,  in  fact,  that  the  first  applicant  did  not 
cease  to  use  the  mark  on  account  of  the  refusal  of  the  govern- 
ment to  protect  it  by  registration.  Accordingly,  a  change  in 
the  views  of  the  Patent  Office  as  to  the  registrability  of  a  mark, 
upon  an  application  by  a  second  party,  might  cause  great  injury 
to  the  applicant  who  had  been  formerly  refused.  "\Yhere,  there- 
fore, as  in  this  case,  registration  had  been  granted  under  such 
circumstances,  it  was  held  that  the  interests  of  the  public  de- 
manded an  immediate  cancellation  of  the  mark.  (Blatt  fur  Patent, 
Muster  und  Zeichenwesen,  1905,  p.  105.) 

Lawful  Use  of  Another's  Trade  Mark. 

A  German  manufacturer  sold  a  certain  pharmaceutical  pro- 
duct under  the  trade  mark  "Aspirin."  The  same  product  was 
made  by  a  competitor  who  sold  it  in  tubes,  labeled  conspicuously, 
as  the  name  of  the  product,  "Acid  acetylo-salicylic,"  and  under- 
neath, in  small  type,  and  separated  by  two  lines  from  the  above 
designation,  the  words  in  their  German  form,  "equivalent  to 
Aspirin."  The  owner  of  this  trade  mark  brought  suit,  but 
judgment  for  the  defendant  has  been  affirmed  by  the  Supreme 
Court  of  the  Empire. 

The  German  courts  hold  that  the  plaintiff's  rights  in  the  trade 
mark  did  not  involve  the  right  to  exclude  a  third  party  from  all 
use  thereof  on  pharmaceutical  products,  but  only  to  prevent  the 
use  of  the  mark  as  the  designation  of  the  article  in  connection 
with  which  it  is  used.  As  employed  in  this  instance,  the  word 
did  not  appear  as  the  designation  of  the  goods,  which  were 


GERMANY  223 

plainly  denominated  otherwise.  The  only  question  to  be  decided 
by  "the  court  was,  in  its  view?  whether  the  use  made  by  the  de- 
fendant of  the  mark  was  one  calculated  to  mislead  the  public  and 
to  cause  the  defenant's  product  to  be  confused  with  the  plain- 
tiff's. The  court  said  that  the  words  "equivalent  to"  were  an 
unequivocal  statement  that  the  goods  were  something  other  than 
"Aspirin"  and  that  these  words  were  so  conspicuously  placed  in 
connection  with  the  name  that  they  would  never  escape  anyone 
who  saw  the  name  itself.  (Bayer  &  Co.  vs.  Asche  &  Co.,  Gewer- 
blicher  Rechtsschutz  und  Urheberrecht,  1906,  p.  263.) 

The  Rights  of  Foreigners  under  the  German  Law. 

The  Supreme  Court  under  date  of  May  8,  1907,  has  held  that 
a  stranger  invoking  for  his  goods  the  protection  of  the  Ger- 
man law  must  show  that  his  merchandise  is  equally  protected  in 
his  own  country,  that  is,  that  the  remedy  which  he  seeks  under 
the  German  law  is  one  that  is  secured  to  him  by  the  law  of  his 
own  country.  (Zeitschrift  fur  Industrierecht,  1906,  p,  261.) 

Infringement. 

Infringement  is  committed  when  a  competitor  intentionally 
makes  such  use  of  his  own  name  on  labels  or  advertisements, 
that  the  only  portion  of  same  which  is  noticeable  is  the  same  as, 
or  similar  to  a  registered,  trade  mark.  This  principle  was  laid 
down  in  a  decision  of  the  Supreme  Court,  II  Civil  Department, 
December  11,  1908. 

The  case  before  the  court  was  that  of  Lindt  &  Spriingli  vs. 
A.  &  W.  Lindt.  Lindt  &  Spriingli  are  the  owners  of  the  reg- 
istered trade  mark  "Lindt,"  for  chocolate,  and  the  firm  A.  &  W. 
Lindt  were  accused  of  infringement  on  the  ground  that  they 
labeled  or  advertised  chocolates  for  sale  with  the  inscription, 
"Genuine  A.  &  W.  Lindt  Chocolate,"  printing  the  words  "Lindt 
Chocolate"  in  large  block  letters,  and  the  word  "genuine"  and 
the  initials  "A.  &  W."  in  letters  so  small  as  not  to  be  noticeable 
without  careful  scrutiny.  (Zeitschrift  fur  Industrierecht,  Feb- 
ruary 15,  1909.) 

Similarity  of  Goods. 

It  has  been  held  by  a  court  that  an  assignment  of  the  right 
to  use  a  certain  trade  mark  upon  watches  and  parts,  does  not 
sustain  a  claim  of  the  right  to  use  the  mark  also  upon  watch 
chains,  inasmuch  as  the  chains  are  not  part  of  the  watch  or 
necessary  to  its  completion,  but  are  to  be  considered  as  entirely 
separate  and  unrelated  goods.  (Zeitschrift  fur  Industrierecht, 
1908,  p.  83.) 

The  English  words  "Rival"  and  "Climax"  have  both  been 
adjudged  good  trade  marks  in  recent  suits  for  cancellation 


224  GERMANY 

brought  before  the  German  Patent  Office.  The  appellant  in  the 
first  suit  alleged  that  the  word  "Rival,"  meaning  as  it  did  a 
"competitor,"  lacked  the  arbitrary  and  fanciful  quality  required 
in  a  technical  trade  mark.  The  examiner  of  claims,  concurred 
in  this  opinion  and  recommended  the  cancellation  of  the  mark. 
His  decision,  however,  was  overruled  by  the  registrar,  who 
held  that  the  mark  was  sufficiently  distinctive  to  merit  registra- 
tion. The  fact  that  the  French  words  "Sans  Rival"  (without 
a  rival)  had  been  refused  registration  in  Germany,  did  not  affect 
the  present  case  in  which  the  word  "Rival"  alone  was  in  ques- 
tion. The  cancellation  was  therefore  refused. 

The  Patent  Office  has  recently  decided  that  names  of  the  days 
of  the  week  are  not  registrable  as  trade  marks.  This  decision 
was  based  upon  the  well  known  fact  that  it  is  a  custom  among 
trades  people  to  hold  special  sales  of  their  goods  on  a  particular 
day.  Confusion  might  thus  be  caused  if  a  day  was  appropriated 
by  any  one  trader,  and  much  harm  would  be  done  both  to  the 
trading  and  to  the  purchasing  public.  (Zeitschrift  fur  Indus- 
trierecht,  1911,  p.  143.) 

A  very  large  number  of  applications  for  trade  marks  con- 
sisting of  words  are  filed,  which,  although  they  do  not  at  first 
sight  reveal  the  fact  that  they  are  not  registrable  in  the  sense  of 
the  law,  and  appear  rather  to  be  fancy  or  invented  words,  are  in 
reality  not  suitable  for  registration.  For  example,  the  following 
words  refer  to  the  quality  of  the  goods,  and  cannot  therefore  be 
registered,  viz:  Brilliant,  Chic,  Gloriosa,  Graciosa,  Preciosa,  Re- 
form, Universal,  etc. 

The  reasons  for  refusing  registration  to  the  mark  "Non  plus 
ultra"  were  not  held  to  be  conclusive  in  the  present  case.  The 
common  use  of  the  word,  in  the  sense  of  the  turning  point  or 
crisis  of  a  narrative  or  of  a  series  of  events,  was  further  held  as 
giving  it  enough  of  fanciful  quality  to  merit  registration.  This 
view  was  further  sanctioned  by  the  fact  that  the  British  Patent 
Office,  which  could  better  judge  as  to  its  meaning  and  use  as  an 
English  term,  had  never  objected  to  the  word  as  descriptive. 
(Markenschutz  und  Wettbewerb,  Nov.  1,  1911,  pp.  57-58.) 

A  decision  was  rendered  by  the  German  Patent  Office  involv- 
ing the  well  known  mark  of  the  Victor  Talking  Machine  Com- 
pany, showing  the  representation  of  a  dog,  sitting  in  a  listening 
attitude  before  a  gramophone  horn,  with  the  words  "His  Mas- 
ter's Voice"  underneath.  The  mark  was  protected  in  Germany 
by  two  different  registrations.  An  application  was  later  made 
to  register  a  mark  for  talking  machines,  consisting  of  a  phono- 
graph before  the  horn  of  which  a  dove  is  seen  with  outstretched 
wings.  A  forest  is  shown  in  the  background  and  the  word 
"Phoenix"  completes  the  mark.  On  close  comparison,  the  two 
marks  exhibit  considerable  differences,  so  that,  when  seen  to- 
gether, it  would  appear  to  be  improbable  that  any  confusion 


GIBRALTAR  225 

could  arise  in  their  use.  The  Patent  Office,  however,  decided 
that  the  similarity  of  the  marks  must  be  determined  by  a  com- 
parison of  the  impressions  left  upon  purchasers,  after  seeing  the 
two  marks  at  different  times.  The  fact  that  in  each  mark  the 
characteristic  feature  is  a  phonograph  and  the  picture  of  a  listen- 
ing animal  is  sufficient  to  make  the  after  impression  of  each  so 
similar  to  that  of  the  other  as  to  cause  confusion.  It  made  no 
difference  that  a  dog  is  shown  in  one  mark  and  a  dove  in  the 
other.  (Mitteilungen  vom  Verband  deutscher  Patentanwalte, 
1912,  p.  24.) 


GIBRALTAR 

This  important  British  fortress,  Crown  colony  and  seaport, 
near  the  southern  extremity  of  Spain,  may  be  described  as  a  bold 
headland  jutting  into  the  sea,  running  nearly  due  north  and  south, 
at  the  entrance  of  the  Mediterranean,  60  miles  S.  E.  of  Cadiz. 
This  rock  forms  a  promontory  connected  with  the  continent  by 
an  isthmus  of  sand  1,500  yards  long  and  from  950  to  1,800  yards 
broad.  It  is  three  miles  in  length  from  north  to  south  by  a  half 
to  three-quarters  of  a  mile  in  breadth,  and  seven  miles  in  circum- 
ference. Its  area  is  about  1,206  acres.  The  rock  rises  abruptly 
above  the  sea  to  about  1,400  feet ;  on  the  western  side  the  two 
towns  are  built,  the. northern  is  Gibraltar  proper  and  the  southern 
(the  south)  is  known  in  Spanish  as  Europa.  Gibraltar  is  a  free 
port  and  the  entrepot  for  the  distribution  of  the  manufactures  of 
the  United  Kingdom  and  of  other  countries  to  the  Morocco,  Al- 
gerian and  Spanish  ports ;  it  is  also  one  of  the  chief  coaling  sta- 
tions of  the  Mediterranean,  but  trade,  excepting  in  coals,  timber, 
flour  and  East  Indian  wheat,  has  diminished  considerably  of  late 
years,  especially  since  the  development  of  direct  steam  commun- 
ication by  Great  Britain  and  other  countries  with  the  ports  in  the 
vicinity.  The  building  of  dry  docks  and  a  commercial  port  is  in 
progress,  and,  doubtless,  when  these  important  works  are  car- 
ried out,  great  impetus  will  be  given  to  trade.  There  is  a  rail- 
way line  from  the  neighboring  Spanish  port  of  Algeciras  (which 
is  five  miles  distant  by  sea  and  12  by  land  from  Gibraltar)  to 
Bobadilla,  on  the  Malaga-Cordoba-Madrid  line,  of  177  kilo- 
metres in  length.  The  total  population  in  1911  was  estimated 
at  30,000. 

MONEY,  WEIGHTS  AND  MEASURES — Same  as  Great  Britain. 

Laws. 

Ordinance  to  prevent  the  imposition  of  the  fraudulent  marks 
on  merchandise,  1888,  No.  4,  substantially  like  the  British. 

15 


226  GOLD  COAST  COLONY 

Documents  Required. 

Power  of  Attorney ;  three  facsimiles  of  the  mark ;  statement  of 
the  goods  for  which  same  is  to  be  used,  as  well  as  applicant's 
address,  and  one  electrotype. 

Assignment. 
A  trade  mark  is  assignable  with  the  good  will  of  the  business. 


GOLD  COAST  COLONY 

The  Gold  Coast  is  the  name  generally  given  to  a  portion  of 
Upper  Guinea.  The  length  of  coast-line  is  about  350  miles.  The 
area  of  the  colony  is  24,200  square  miles;  of  Ashanti  20,000 
square  miles,  and  of  the  Northern  Territories  35,800  square  miles. 

The  British  Gold  Coast  extends  from  the  Volta  River  to  the 
French  settlement  of  Assinie  on  the  west.  The  colony  includes  the 
best  landing  places  and  the  richest  gold  districts  in  Guinea.  The 
population  may  be  roughly  estimated  at  1,700,000,  of  whom  not 
more  than  550  are  Europeans. 

MONEY,  WEIGHTS  AND  MEASURES — Same  as  Great  Britain. 

Laws. 

Ordinance  No.  2  of  1900.  Amendment  No.  7  of  1902.  Trade 
Mark  Rules  of  June  10,  1902. 

Duration. 
Fourteen  years ;  renewable. 

What  May  be  Registered. 

(a)  A  name  of  an  individual  or  firm  printed,  impressed,  or 
woven  in  some  particular  or  distinctive  manner ;  or 

(b)  A  written  signature  or  copy  of  a  written  signature  of  the 
individual  or  firm  applying  for  registration  thereof  as  a  trade 
mark ;  or 

(c)  A  distinctive  device,  mark,  brand,  heading,  label,  or  ticket. 

(d)  An  invented  word  or  invented  words,  or 

(e}  A  word  or  words  having  no  reference  to  the  character  or 
quality  of  the  goods,  and  not  being  a  geographical  name. 

There  may  be  added  to  any  one  or  more  of  the  essential  par- 
ticulars mentioned  in  this  section  any  letter,  words,  or  figures, 
or  combination  of  letters,  words,  or  figures,  or  any  of  them,  but 
the  applicant  for  registration  of  any  such  additional  matter  must 
state  in  his  application  the  essential  particulars  of  the  trade  mark, 
and  must  disclaim  in  his  application  any  right  to  the  exclusive 


GREAT  BRITAIN  227 

use  of  added  matter,  and  a  copy  of  the  statement  and  disclaimer 
shall  be  entered  on  the  register. 

A  person  need  not  under  this  section  disclaim  his  own  name 
or  the  foreign  equivalent  thereof,  or  his  place  of  business,  but 
no  entry  of  any  such  name  shall  affect  the  righL  of  any  owner  of 
the  same  name  to  use  that  name  or  the  foreign  equivalent  thereof. 

Any  special  and  distinctive  word  or  words,  letter,  figure,  or 
combination  of  letters  or  figures  or  of  letters  and  figures  used 
as  a  trade  mark  before  August  13,  1875,  may  be  registered  as 
a  trade  mark  under  this  Act. 

Requirements. 

Power  of  attorney;  three  facsimiles  of  the  mark;  statement 
of  the  goods  for  which  same  is  to  be  used,  as  well  as  applicant's 
address,  and  one  electrotype. 

Classification. 
Same  as  Great  Britain. 

Government  Fees. 
On  application,  10s;  on  completion,  £2;  renewal  fee,  £1. 

Assignment. 

A  trade  mark  is  assignable  with  the  good  will  of  the  business. 
Registering  a  subsequent  proprietor,  £1. 


GREAT  BRITAIN 

AREA  AND  POPULATION — The  total  area  of  England,  Scotland, 
Ireland,  Wales,  the  Isle  of  Man  and  the  Channel  Islands  is  121,391 
square  miles ;  the  total  for  the  British  Empire  is  11,454,862  square 
miles.  The  total  population  of  the  empire  in  1910  was  397,261,509. 
The  population  of  the  United  Kingdom  April  1,  1911,  when  the 
last  census  was  taken,  was :  England  and  Wales,  36,075,260 ;  Scot- 
land 4,759,521 ;  Ireland,  4.381,951.  Total,  45,216,741. 

MONEY — Pound  (£)=$4.8665  United  States;  shilling  (s.)=: 
24.3325  cents  United  States;  pence  (d.)=2  cents  United  States. 

WEIGHTS  AND  MEASURES — Weights  and  measures  differing 
from  those  used  in  the  United  States  are  as  follows:  Imperial 
gallon=1.2003  United  States  gallons ;  imperial  bushel=1.031515 
United  States  bushels;  hundredweight=112  pounds;  ton=2,240 
pounds;  imperial  quarter  (grain)=480  pounds. 

Laws. 

The  first  British  Statute  on  the  subject  of  Trade  Marks  was 
enacted  in  1862.  The  first  provisions  for  the  registration  of 
trade  marks  was  a  Statute  of  1875, 


228  GREAT  BRITAIN 

Laws  of  August  25,  1883,  August  23,  1887,  December  24,  1888, 
May  11,  1891.  Rules  of  December  31,  1889.  Trade  Mark  Rules 
of  1890,  1897  and  1898.  Trade  Mark  Act  of  1905.  Trade  Mark 
Rules  of  March  24,  1906. 

Duration. 

The  registration  of  a  trade  mark  shall  be  for  a  period  of  four- 
teen years,  but  may  be  renewed  from  time  to  time.  (Sec.  28.) 

Renewal. 

At  any  time  not  less  than  two  months  and  not  more  than  three 
months  before  the  expiration  of  the  last  registration  of  a  trade 
mark  any  person  may  leave  at  the  office  a  fee  for  the  renewal 
of  the  registration  of  the  mark  upon  form  TM  No.  12.  Such 
person  shall  indorse  upon  such  form  his  name  and  address,  and 
before  taking  any  further  step  the  registrar  may  require  such 
person  to  furnish  within  five  days  an  authority  to  pay  such  fee 
signed  by  the  registered  proprietor,  and  if  such  person  does  not 
furnish  such  authority,  may  return  such  fee  and  treat  it  as  not 
received. 

When  he  does  not  require  such  authority,  the  Registrar  shall 
upon  receipt  of  such  fee  communicate  with  the  registered  pro- 
prietor at  his  registered  address,  stating  that  the  fee  has  been 
received  and  that  the  registration  will  in  due  course  be  renewed. 

At  a  date  not  less  than  one  month  and  not  more  than  two 
months  before  the  expiration  of  the  last  registration  of  a  mark, 
if  no  fee  upon  the.  Form  TM  No.  12  has  been  received,  the 
Registrar  shall  send  to  the  registered  proprietor  at  his  registered 
address  a  notice  in  the  Form  O  No.  3. 

At  a  time  not  less  than  14  days  and  not  more  than  28  days 
before  the  expiration  of  the  last  registration  of  a  mark,  the  Regis- 
trar shall,  if  no  renewal  fee  has  been  received,  send  a  notice  to  the 
registered  proprietor  at  his  registered  address  in  the  Form  O 
No.  4. 

If  at  the  date  of  the  expiration  of  the  last  registration  of  a 
mark  the  renewal  fee  has  not  been  paid,  the  Registrar  shall  ad- 
vertise the  fact  forthwith  in  the  Journal,  and  if  within  one  month 
of  such  advertisement  the  renewal  fee  upon  Form  TM  No.  13, 
together  with  an  additional  fee  upon  Form  TM  No.  14,  is  re- 
ceived, he  may  renew  the  registration  without  removing  the 
mark  from  the  register. 

Where  after  one  month  from  such  advertisement  such  fees 
have  not  been  paid,  the  Registrar  may  remove  the  mark  from  the 
register  as  of  the  date  of  the  expiration  of  the  last  registration, 
but  may  upon  payment  of  the  renewal  fee  upon  Form  TM  Xo.  13, 
together  with  the  additional  fee'  upon  the  Form  TM  No.  1  I. 
restore  the  mark  to  the  register  if  satisfied  that  it  is  just  so  to 
do,  and  upon  such  conditions  as  he  may  think  fit  to  impose. 


GREAT  BRITAIN  229 

-  Where  a  trade  mark  has  been  removed  from  the  register  the 
Registrar  shall  cause  to  be  entered  in  the  '.register  a  record  of 
such  removal  and  of  the  cause  thereof. 

Upon,  the  renewal  of  a  registration  a  notice  to  that  effect  shall 
be  sent  to  the  registered  proprietor  at  his  registered  address 
and  the  renewal  shall  be  advertised  in  the  Journal. 

What  May  Be  Registered. 

A  registrable  trade  mark  must  consist  of  or  contain  at  least 
one  of  the  following  essential  particulars : 

1.  The  signature   (or,  in  the  case  of  an  incorporated  com- 
pany, the  name  written  in  some  particular  and  distinctive  man- 
ner) of  the  firm  applying  for  the  registration,  or  of  a  predecessor 
in  the  business ;  or 

2.  An  invented  word  or  invented  words ;  or 

3.  A  word  or  words  having  no  reference  to  the  character  or 
quality  of  the  goods,  and  not  being  a  geographical  name ;  or 

4.  A  mark  which  is  otherwise  of  a  distinctive  character  so 
as  to  be  adapted  to  distinguish  practically  the  goods  of  the  pro- 
prietor of  the  trade  mark  from  those  of  other  firms. 

In  determining  whether  a  mark  is  distinctive  for  the  purposes 
of  this  section,  the  tribunal  may,  in  the  case  of  a  trade  mark  in 
actual  use,  take  into  consideration  the  extent  to  which  such 
user  has  rendered  such  trade  mark  in  fact  distinctive  for  the 
goods  with  respect  to  which  it  is  registered  or  proposed  to  be 
registered,  but  subject  hereto  a  pictorial  representation  of  such 
goods,  or  words  having  reference  to  the  character  or  quality  of 
such  goods,  shall  not  of  themselves  be  deemed  distinctive  under 
the  provisions  of  this  section.  (Sec.  9.) 

For  the  purpose  of  this  section  "distinctive"  shall  mean  adapted 
to  distinguish  the  goods  of  the  proprietor  of  the  trade  mark  from 
those  of  other  persons. 

Words  having  indirect  reference  to  the  character  or  quality 
of  the  goods  are  registrable ;  they  may  be  geographical  or  even 
surnames  within  limitations. 

An  applicant  is  not  limited  to  his  own  signature  as  a  trade 
mark.  He  may  register  the  signature  of  his  predecessor  in  busi- 
ness or  even  the  signature  of  some  other  person,  under  special 
circumstances.  The  name  of  a  company  may  also  be  registered. 

Any  other  distinctive  mark  can  be  registered,  Under  Section 
3  a  Mark  includes  a  device,  brand,  heading,  label,  ticket,  name, 
signature,  word,  letter,  numeral,  or  any  combination  thereof. 

The  Registrar  may  refuse  to  accept  any  application  upon  which 
the  following  appear: 

(a)  The  words  "Patent,"  "Patented,"  or  "By  Royal  Letters 
Patent,"  "Registered."  "Registered  Design,"  "Copyright,"  "En- 
tered at  Stationers'  Hall,"  "To  counterfeit  this  is  forgery,"  or 
words  to  like  effect. 


230  GREAT  BRITAIN 

(b)  Representations  of  their  Majesties  or  of  any  member  of 
the  Royal  Family. 

Representations  of  the  Royal  Arms  or  Royal  Crests,  or  arms 
or  crests  so  nearly  resembling  them  as  to  lead  to  mistake,  or 
of  British  Royal  crowns,  or  of  the  British  national  flags,  or 
the  word  Royal  or  any  other  words,  letters  or  devices  calculated 
to  lead  persons  to  think  that  the  applicant  has  Royal  patronage 
or  authorization,  may  not  appear  on  trade  marks,  the  registration 
of  which  is  applied  for.  Provided  always  that  nothing  contained 
in  this  rule  shall  preclude  the  Registrar  from  allowing  the  regis- 
tration as  an  "old  mark,"  that  is  as  a  mark  which  was  used  by 
the  applicant  or  his  predecessors  in  business  before  the  13th  of 
August,  1875,  of  any  mark  which  was  capable  of  being  so  regis- 
tered before  the  Trade  Marks  Act,  1905,  came  into  operation. 
(Art.  12.) 

Where  representations  of  the  arms  of  a  foreign  State  or  place 
appear  on  a  mark  the  Registrar  may  call  for  such  justification 
as  he  may  deem  necessary  for  their  use. 

Where  a  representation  of  the  arms  or  emblems  of  any  city, 
borough,  town,  place,  society,  body  corporate,  or  institution  ap- 
pears on  a  mark,  the  applicant  shall,  if  so  required,  furnish  the 
Registrar  with  a  consent  from  such  official  as  the  Registrar  may 
consider  entitled  to  give  consent  to  the  use  of  such  arms  or 
emblems. 

Where  the  names  or  representations  of  living  persons  appear 
on  a  trade  mark,  the  Registrar  shall,  if  he  so  require,  be  furnished 
with  consents  from  such  persons  before  proceeding  to  register 
the  mark.  In  the  case  of  persons  recently  dead  the  Registrar  may 
call  for  consents  from  their  legal  representatives  before  proceed- 
ing with  registration  of  a  trade  mark  on  which  their  names  or 
representations  appear.  (Art,  15.) 

Where  the  name  of  a  description  of  any  goods  appears  on  a 
trade  mark  the  Registrar  may  refuse  to  register  such  mark  in 
respect  of  any  goods  other  than  the  goods  so  named  or  described. 

Where  the  name  or  description  of  any  goods  appears  on  a  trade 
mark  which  name  or  description  in  use  varies,  the  Registrar  may 
permit  the  registration  of  the  mark  with  the  name  or  description 
upon  it  for  goods  other  than  those  named  or  described,  the  appli- 
cant stating  in  his  application  that  the  name  or  description  varies. 

Mode  of  Application. 

If  application  for  registration  of  a  trade  mark  be  made  by 
a  firm  or  partnership  it  may  be  signed  in  the  name  or  for  and  on 
behalf  of  the  firm  or  partnership  by  any  one  or  more  members 
thereof. 

If  the  application  be  made  by  a  body  corporate  it  may  be  signed 
by  a  Director  or  by  the  Secretary  or  other  principal  officer  of 
such  body  corporate. 


GREAT  BRITAIN  23.1 

Any  application  may  be  signed  by  an  agent. 

Every  application  for  registration  of  a  trade  mark  shall  con- 
tain a  representation  of  the  mark  affixed  to  it  in  the  square  which 
the  Form  TM  No.  2  contains  for  that  purpose. 

Where  the  representation  exceeds  such  square  in  size  the  rep- 
resentation shall  be  mounted  upon  linen,  tracing  cloth  or  other 
material  that  the  Registrar  may  consider  suitable.  Part  of  the 
mounting  shall  be  affixed  in  the  space  aforesaid  and  the  rest  may 
be  folded  over. 

There  shall  be  sent  with  every  application  for  registration  of  a 
trade  mark  four  additional  representations  of  such  mark  on  the 
Form  TM  No.  3,  exactly  corresponding  to  that  affixed  to  the 
application  Form  TM  No.  2,  and  noted  with  all  such  particulars 
as  may  from  time  to  time  be  required  by  the  Registrar.  Such 
particulars  shall,  if  required,  be  signed  by  the  applicant  or  his 
agent. 

All  representations  of  marks  must  be  of  a  durable  nature,  but 
the  applicant  may  in  case  of  need  supply  in  place  of  representa- 
tions on  the  Form  TM  No.  3,  half  sheets  of  strong  foolscap  of 
the  size  aforesaid  with  the  representations  affixed  thereon  and 
noted  as  aforesaid. 

Applications  for  the  registration  of  the  same  mark  in  different 
classes  shall  be  treated  as  separate  and  distinct  applications,  and 
in  all  cases  where  a  trade  mark  is  registered  under  the  same 
official  number  for  goods  in  more  than  one  class,  the  registration 
shall  henceforth  for  the  purpose  of  fees  and  otherwise  be  deemed 
to  have  been  made  on  separate  and  distinct  applications  in  respect 
of  the  goods  included  in  each  class.  (Art.  24.) 

The  Registrar,  if  dissatisfied  with  any  representations  of  a 
mark  may  at  any  time  require  another  representation  satisfactory 
to  him  to  be  substituted  before  proceeding  with  the  application. 

Where  a  drawing  or  other  representation  or  specimen  cannot 
be  given  in  manner  aforesaid,  a  specimen  or  copy  of  the  trade 
mark  may  be  sent  either  of  full  size  or  on  a  reduced  scale,  and 
in  such  form  as  the  Registrar  may  think  most  convenient. 

The  Registrar  may  also,  in  exceptional  cases,  deposit  in  the 
Office  a  specimen  or  copy  of  any  trade  mark  which  cannot  con- 
veniently be  shown  by  a  representation,  and  may  refer  thereto 
in  the  register  in  such  manner  as  he  may  think  fit. 

When  a  trade  mark  contains  a  word  or  words  in  other  than 
Roman  characters,  there  shall  be  indorsed  on  the  application  in 
Form  TM  No.  2  and  on  each  of  the  accompanying  representations 
in  Form  TM  No.  3,  a  sufficient  transliteration  and  translation  to 
the  satisfaction  of  the  Registrar  of  each  of  such  words,  and  every 
such  indorsement  shall  be  signed  by  the  applicant  or  his  agent 

Where  a  trade  mark  contains  a  word  or  words  in  a  language 
other  than  English,  the  Registrar  may  ask  for  an  exact  trans- 


232  GREAT  BRITAIN 

lation  thereof,  and  if  he  so  requires  such  translation  shall  be 
indorsed  and  signed  as  aforesaid. 

Upon  receipt  of  an  application  for  registration,  the  Registrar 
shall  cause  a  search  to  be  made  amongst  the  registered  Marks 
and  pending  applications  for  the  purpose  of  ascertaining  whether 
there  are  on  record  any  Marks  for  the  same  goods  or  description 
of  goods  identical  with  the  Mark  applied  for  or  so  nearly  resem- 
bling it  as  to  be  calculated  to  deceive. 

If  after  such  a  search  and  a  consideration  of  the  application 
the  Registrar  thinks  there  is  no  objection  to  the  Mark  being  regis- 
tered, he  may  accept  it  absolutely  or  subject  to  conditions,  amend- 
ments and  modifications  which  he  shall  communicate  to  the  appli- 
cant in  writing. 

If  after  such  search  and  consideration  of  the  application  any 
objections  appear,  a  statement  of  those  objections  shall  be  sent 
to  the  applicant  in  writing,  and  unless  within  one  month  the 
applicant  applies  for  a  hearing,  he  shall  be  deemed  to  have  with- 
drawn his  application. 

If  the  Registrar  accepts  an  application  subject  to  any  condi- 
tions, amendments,  or  modifications,  and  the  applicant  objects  to 
such  conditions,  amendments,  or  modifications,  he  shall  within  one 
month  from  the  date  of  the  communication  notifying  such  accept- 
ance apply  for  a  hearing,  and  if  he  does  not  do  so  he  shall  be 
deemed  to  have  withdrawn  his  application.  If  the  applicant  does 
not  object  to  such  conditions,  amendments  or  modifications,  he 
shall  forthwith  notify  the  Registrar  in  writing. 

The  decision  of  the  Registrar  at  such  hearing  as  aforesaid 
shall  be  communicated  to  the  applicant  in  writing,  and  if  he  ob- 
jects to  such  decision,  he  may  within  one  month  apply  upon 
Form  TM  No.  4  requiring  the  Registrar  to  state  in  writing  the 
grounds  of  his  decision  and  the  materials  used  by  him  in  arriving 
at  the  same. 

Upon  receipt  of  such  form  the  Registrar  shall  send  to  the 
applicant  such  statement  as  aforesaid  in  writing,  and  the  date 
when  such  statement  is  sent  shall  be  deemed  to  be  the  date  of  the 
Registrar's  decision  for  the  purpose  of  appeal. 

The  Registrar  may  call  on  an  applicant  to  insert  in  his  appli- 
cation such  disclaimer  as  the  Registrar  may  think  fit  in  order  that 
the  public  generally  may  understand  what  the  applicant's  rights, 
if  his  mark  is  registered,  will  be. 

If  the  Hearing  before  the  Registrar  is  successful  the  Mark  is 
duly  advertised  in  the  Trade  Marks  Journal  upon  the  necessary 
formalities  having  been  attended  to,  and  one  month  thereafter 
is  allowed  for  opposition,  after  which,  if  no  opposition  is  entered, 
the  Mark  is  registered  on  payment  of  the  registration  fee  and  the 
certificate  is  issued. 


GREAT  BRITAIN  233 

Appeal  from  Registrar. 

There  shall  be  no  appeal  from  a  decision  of  the  Registrar  other- 
wise than  to  the  Board  of  Trade,  but  the  court  in  dealing  with 
any  question  of  the  rectification  of  the  register  shall  have  power 
to  review  any  decision  of  the  Registrar  relating  to  the  entry  in 
question  or  the  correction  sought  to  be  made. 

Opposition  to  Registration. 

Any  person  may  within  one  month  from  the  date  of  any  ad- 
vertisement in  the  Journal  of  an  application  for  registration  of  a 
trade  mark  give  notice  in  writing  at  the  Office  of  opposition  to 
the  registration. 

Such  notice  shall  be  in  Form  TM  No.  7  and  shall  contain  a 
statement  of  the  grounds  upon  which  the  opponent  objects  to  the 
registration.  If  the  registration  is  opposed  on  the  ground  that  the 
mark  resembles  marks  already  on  the  register,  the  numbers  of 
such  marks  and  the  numbers  of  the  Journals  in  which  they  have 
been  advertised  shall  be  set  out.  Such  notice  shall  be  accompanied 
by  a  duplicate  which  the  Registrar  will  forthwith  send  to  the 
applicant. 

Within  one  month  from  the  receipt  of  such  duplicate  the  appli- 
cant shall  send  to  the  Registrar  a  counterstatement  in  writing 
setting  out  the  grounds  on  which  he  relies  as  supporting  his 
application.  The  applicant  shall  also  set  out  what  facts,  if  any, 
alleged  in  the  Notice  of  Opposition  he  admits.  Such  counter- 
statement  shall  be  accompanied  by  a  duplicate  in  writing. 

Upon  receipt  of  such  counterstatement  and  duplicate  the  Regis- 
trar will  forthwith  send  the  duplicate  to  the  opponent  and  within 
one  month  from  the  receipt  of  the  duplicate  the  opponent  shall 
leave  at  the  Office  such  evidence  by  way  of  statutory  declaration 
as  he  may  desire  to  adduce  in  support  of  his  opposition  and  shall 
deliver  to  the  applicant  copies  thereof. 

If  an  opponent  leaves  no  evidence,  he  shall  be  deemed  to  have 
abandoned  his  opposition,  but  if  he  does  then  within  one  month 
from  the  receipt  of  the  copies  of  declaration,  the  applicant  shall 
leave  at  the  Office  such  evidence  by  way  of  statutory  declaration 
as  he  desires  to  adduce  in  support  of  his  application  and  shall 
deliver  to  the  opponent  copies  thereof. 

Within  fourteen  days  from  the  receipt  by  the  opponent  of  the 
copies  of  the  applicant's  declarations  the  opponent  may  leave 
at  the  Office  evidence  by  statutory  declaration  in  reply,  and  shall 
deliver  to  the  applicant  copies  thereof.  Such  evidence  shall  be 
confined  to  matters  strictly  in  reply. 

In  any  proceedings  before  the  Registrar,  he  may  at  any  time, 
if  he  thinks  fit,  give  leave  to  either  the  applicant  or  the  opponent 
to  file  any  evidence  upon  such  terms  as  to  costs  or  otherwise  as 
the  Registrar  may  think  fit. 

Where  there  are  exhibits  to  declarations  filed  in  an  opposition, 


234  GREAT  BRITAIN 

copies  or  impressions  of  such  exhibits  shall  be  sent  to  the  other 
party  on  his  request,  or,  if  such  copies  or  impressions  cannot 
conveniently  be  furnished,  the  originals  shall  be  sent  to  the  Office, 
so  that  they  may  be  open  to  inspection.  The  original  exhibits 
shall  be  produced  at  the  hearing  unless  the  Registrar  otherwise 
directs. 

Upon  completion  of  the  evidence  the  Registrar  shall  give  notice 
to  the  parties  of  a  date  when  he  will  hear  the  arguments  in  the 
case.  Such  appointment  shall  be  for  a  date  at  least  fourteen  days 
after  the  date  of  the  notice,  unless  the  parties  consent  to  a  shorter 
notice.  Within  seven  days  from  the  receipt  of  such  notice  both 
parties  shall  file  Form  TM  No.  9.  A  party  who  receives  such 
notice  and  who  does  not,  within  seven  days  from  the  receipt 
thereof,  give  notice  on  Form  TM  No.  9  that  he  intends  to  appear, 
may  be  treated  as  not  desiring  to  be  heard  and  the  Registrar  may 
act  accordingly. 

Where  in  opposition  proceedings  any  extension  of  time  is 
granted  to  any  party,  the  Registrar  may  thereafter,  if  he  thinks 
fit,  without  giving  the  said  party  a  hearing,  grant  any  reasonable 
extension  of  time  to  the  other  party  in  which  to  take  any  subse- 
quent step. 

The  decision  of  the  Registrar  shall  be  subject  to  appeal  to  the 
court  at  the  instance  of  any  of  the  parties  upon  notice  of  appeal 
being  given  in  the  prescribed  manner,  and  except  and  so  far 
as  the  court  may  otherwise  direct,  such  appeal  shall  be  heard  on 
the  same  materials  as  were  before  the  Registrar. 

On  such  appeal  the  court  shall,  if  required,  hear  the  parties 
and  the  Registrar,  and  shall  make  an  order  determining  whether, 
and  subject  to  what  conditions,  if  any,  registration  is  to  be  per- 
mitted. 

In  any  proceeding  under  this  section,  the  tribunal  hearing  the 
parties  may  permit  the  trade  mark  proposed  to  be  registered  to 
be  modified  in  any  manner  not  substantially  affecting  the  identity 
of  such  trade  mark,  but  in  such  the  trade  mark  so  modified  shall 
be  advertised  in  the  prescribed  manner  upon  its  being  registered. 

If  a  party  giving  notice  of  opposition  neither  resides  nor  carries 
on  business  in  the  United  Kingdom,  the  tribunal  may  require 
such  party  to  give  security  for  costs  of  proceedings  before  it  rel- 
ative to  such  opposition,  and  in  default  of  such  security  being 
duly  given  may  treat  the  opposition  as  abandoned.  (Sec.  14.) 

Disclaimers. 

If  a  trade  mark  contains  parts  not  separately  registered  by 
the  proprietor  as  trade  marks,  or  if  it  contains  matter  common 
to  the  trade  or  otherwise  of  a  non-distinctive  character,  the  Reg- 
istrar or  the  Board  of  Trade  or  the  court,  in  deciding  whether 
such  trade  mark  shall  be  entered  or  shall  remain  upon  the  regis- 
ter, may  require,  as  a  condition  of  its  being  upon  the  register, 


GREAT  BRITAIN  235 

that  the  proprietor  shall  disclaim  any  right  to  the  exclusive  use 
of  any  part  or  parts  of  such  trade  mark,  or  of  all  or  any  por- 
tion of  such  matter,  to  the  exclusive  use  of  which  they  hold  him 
not  to  be  entitled,  or  that  he  shall  make  such  other  disclaimer 
as  they  may  consider  needful  for  the  purpose  of  defining  his 
rights  under  such  registration.  Provided,  always,  that  no  such 
disclaimer  shall  affect  any  rights  of  the  proprietor  of  the  said 
trade  mark  except  such  as  depend  upon  the  said  registration. 
(Sec.  15.) 

Associated  Trade  Marks. 

If  application  be  made  for  the  registration  of  a  trade  mark  so 
closely  resembling  a  trade  mark  of  the  applicant  already  on  the 
register  for  the  same  goods  or  description  of  goods  as  to  be  calcu- 
lated to  deceive  or  cause  confusion  if  used  by  a  person  other  than 
the  applicant,  the  tribunal  hearing  the  application  may  require 
as  a  condition  of  registration  that  such  trade  marks  shall  be  en- 
tered on  the  register  as  associated  trade  marks. 

Associated  trade  marks  shall  be  assignable  or  transmissible  only 
as  a  whole  and  not  separately,  but  they  shall  for  all  other  purposes 
be  deemed  to  have  been  registered  as  separate  trade  marks. 
Provided  that  where  under  the  provision  of  this  .Act  user  of  a 
registered  trade  mark  is  required  to  be  proved  for  any  purpose, 
the  tribunal  may  if  and  so  far  as  it  shall  think  right,  accept  user 
of  an  associated  registered  trade  mark,  or  of  the  trade  mark  with 
additions  or  alterations  not  substantially  affecting  its  identity  as 
an  equivalent  for  such  user. 

Non-Completion  of  Registration. 

Where  registration  of  a  trade  mark  is  not  completed  within 
twelve  months  from  the  date  of  the  application  by  reason  of 
default  on  the  part  of  the  applicant,  the  Registrar  may,  after  giving 
notice  of  the  non-completion  to  the  applicant  in  writing  in  the 
prescribed  manner,  treat  the  application  as  abandoned  unless  it  is 
completed  within  the  time  specified  in  that  behalf  in  such  notice. 
(Art.  18.) 

Registration  to  Be  Conclusive  After  Seven  Years. 

In  all  legal  proceedings  relating  to  a  registered  trade  mark, 
the  original  registration  of  such  trade  mark  shall,  after  the  expira- 
tion of  seven  years  from  the  date  of  such  original  registration 
(or  seven  years  from  the  passing  of  this  act,  whichever  shall  last 
happen)  be  taken  to  be  valid  in  all  respects  unless  such  original 
registration  was  obtained  by  fraud,  or  unless  the  trade  mark 
offends  against  the  provisions  of  section  11  of  this  Act.  (It  shall 
not  be  lawful  to  register  as  a  trade  mark  or  part  of  a  trade  mark 
any  matter,  the  use  of  which  would  by  reason  of  its  being  cal- 
culated to  deceive  or  otherwise  be  disentitled  to  protection  in  a 


236  GREAT  BRITAIN 

court  of  justice,  or  would  be  contrary  to  law  or  morality,  or  any 
scandalous  design.)      (Sec.  11.) 

Provided  that  nothing  in  this  Act  shall  entitle  the  proprietor 
of  a  registered  trade  mark  to  interfere  with  or  restrain  the  user 
by  any  person  of  a  similar  trade  mark  upon  or  in  connection  with 
goods  upon  or  in  connection  with  which  such  person  has,  by 
himself  or  his  predecessors  in  business,  continuously  used  such 
trade  mark  from  a  date  anterior  to  the  use  of  the  first  mentioned 
trade  mark  by  the  proprietor  thereof  or  his  predecessors  in  busi- 
ness, or  to  object  (on  such  user  being  proved)  to  such  person 
being  put  upon  the  register  for  such  similar  trade  mark  in  re- 
spect of  such  goods  under  the  provisions  of  Section  21  of  this 
Act.  In  case  of  honest  concurrent  user  or  of  other  special  cir- 
cumstances which,  in  the  opinion  of  the  court,  make  it  proper  so 
to  do,  the  court  may  permit  the  registration  of  the  same  trade 
mark,  or  of  nearly  identical  trade  marks  for  the  same  goods  or 
description  of  goods  by  more  than  one  proprietor  subject  to  such 
conditions  and  limitations,  if  any,  as  to  mode  or  place  of  user  or 
otherwise,  as  it  may  think  it  right  to  impose.  (Sec.  21.) 

Non-User  of  Trade  Mark. 

A  registered  trade  mark  may,  on  the  application  to  the  court 
of  any  person  aggrieved,  be  taken  off  the  register  in  respect  of 
any  of  the  goods  for  which  it  is  registered,  on  the  ground  that 
it  was  registered  by  the  proprietor  or  a  predecessor  in  title,  with- 
out any  bona  fide  intention  to  use  the  same  in  connection  with 
such  goods,  and  there  has  in  fact  been  no  bona  fide  user  of  the 
same  in  connection  therewith,  or  on  the  ground  that  there  has  been 
no  bona  fide  user  of  such  trade  mark  in  connection  with  such 
goods  during  the  five  years  immediately  preceding  the  applica- 
tion, unless  in  either  case  such  non-user  is  shown  to  be  due  to 
special  circumstances  in  the  trade,  and  not  to  any  intention  not 
to  use  or  to  abandon  such  trade  mark  in  respect  of  such  goods. 

Assignment. 

A  trade  mark  when  registered  shall  be  assigned  and  transmitted 
only  in  connection  with  the  good  will  of  the  business  concerned 
in  the  particular  goods  or  description  of  goods  for  which  it  has 
been  registered  and  shall  be  determinable  with  that  good  will. 

Documents  Required. 

Authorization  to  agent  signed  by  applicant  or  applicants;  full 
name,  address  and  occupation  of  applicant;  full  description  of 
goods  to  be  covered ;  wood  block  or  electrotype  of  the  mark, 
preferably  not  more  than  two  inches  in  breadth  and  width,  other- 
wise additional  space  is  required  for  advertising,  which  must  be 


GREAT  BRITAIN  237 

paid  for;  six  copies  of  the  mark.    (Form  for  application  may  be 
obtained  from  B.  Singer's  Offices.) 

Fees. 

1.  On  application  not  otherwise  charged  to  register  a  trade 
mark  for  one  or  more  articles  included  in  one  class,  £0.10.0. 

2.  For  registration  of  a  trade  mark  for  one  or  more  articles 
included  in  one  class,  £1.0.0. 

Classification  of  Goods. 

CLASS  1.  Chemical  substances  used  in  manufactures,  photogra- 
phy, or  philosophical  research,  and  anti-corrosives. 

CLASS  2.  Chemical  substances  used  for  agricultural,  horticul- 
tural, veterinary,  and  sanitary  purposes. 

CLASS  3.  Chemical  substances  prepared  for  use  in  medicine 
and  pharmacy. 

CLASS  4.  Raw  or  partly  prepared  vegetable,  animal,  and  min- 
eral substances  used  in  manufactures,  not  included  in  other 
classes. 

CLASS  5.  Unwrought  and  partly  wrought  metals  used  in  man- 
ufacture. 

CLASS  6.  Machineryof  all  kinds,  and  parts  of  machinery,  ex- 
cept agricultural  and  horticultural  machines  included  in  Class  7. 

CLASS  7.  Agricultural  and  horticultural  machinery,  and  parts 
of  such  machinery. 

CLASS  8.  Philosophical  instruments,  scientific  instruments,  and 
apparatus  for  useful  purposes.  Instruments  and  apparatus  for 
teaching. 

CLASS  9.     Musical  instruments. 

CLASS  10.     Horological  instruments. 

CLASS  11.  Instruments,  apparatus,  and  contrivances,  not  medi- 
cated, for  surgical  or  curative  purposes,  or  in  relation  to  the 
health  of  men  or  animals. 

CLASS  12.     Cutlery  and  edge  tools. 

CLASS  13.     Metal  goods  not  included  in  other  classes. 

CLASS  14.  Goods  of  precious  metals  (including  aluminum, 
nickel,  Britannia  metal,  etc.),  and  jewelry,  and  imitations  of  such 
goods  and  jewelry. 

CLASS  15.     Glass. 

CLASS  16.     Porcelain  and  earthenware. 

CLASS  17.  Manufactures  from  mineral  and  other  substances 
for  building  or  decoration. 

CLASS  18.  Engineering,  architectural,  and  building  contriv- 
ances. .  „, 

CLASS  19.     Arms,  ammunition,  and  stores  not  included  in  Uas; 

20. 


238  GREAT  BRITAIN 

CLASS  20.     Explosive  substances. 

CLASS  21.  Naval  architectural  contrivances  and  naval  equip- 
ments not  included  in  Classes  19  and  20. 

CLASS  22.     Carriages. 

CLASS  23.     (a)  Cotton  yarn;  (&)  sewing  cotton, 

CLASS  24.     Cotton  piece  goods  of  all  kinds. 

CLASS  25.     Cotton  goods  not  included  in  Classes  23,  24,  or  38. 

CLASS  26.     Linen  and  hemp  yarn  and  thread. 

CLASS  27.     Linen  and  hemp  piece  goods. 

CLASS  28.  Linen  and  hemp  goods  not  included  in  Classes  26, 
27  and  50. 

CLASS  29.  Jute  yarns  and  tissues,  and  other  articles  made  of 
jute  not  included  in  Class  50. 

CLASS  30.     Silk,  spun,  thrown,  or  sewing. 

CLASS  31.     Silk  piece  goods. 

CLASS  32.     Other  silk  goods  not  included  in  Classes  30  and  31. 

CLASS  33.     Yarns  of  wool,  worsted,  or  hair. 

CLASS  34.     Cloths  and  stuffs  of  wool,  worsted  or  hair. 

CLASS  35.  Woolen  and  worsted  and  hair  goods  not  included  in 
Classes  33  and  34. 

CLASS  36.     Carpets,  floorcloth,  and  oilcloth. 

CLASS  37.  Leather,  skins  unwrought  and  wrought,  and  articles 
made  of  leather  not  included  in  other  classes. 

CLASS  38.     Articles  of  clothing. 

CLASS  39.  Paper  (except  paperhangings),  stationery,  and 
bookbinding. 

CLASS  40.  Goods  manufactured  from  india  rubber  and  gutta 
percha  not  included  in  other  classes. 

CLASS  41.     Furniture  and  upholstery. 

CLASS  42.     Substances. used  as  food,  or  as  ingredients  in  food. 

CLASS  43.     Fermented  liquors  and  spirits. 

CLASS  44.  Mineral  and  aerated  waters,  natural  and  artificial, 
including  ginger  beer. 

CLASS  45.  Tobacco,  whether  manufactured  or  unmanufac- 
tured. 

CLASS  46.     Seeds  for  agricultural  and  horticultural  purposes. 

CLASS  47.  Candles,  common  soap,  detergents ;  illuminating, 
heating,  or  lubricating  oils ;  matches,  and  starch,  blue,  and  other 
preparations  for  laundry  purposes. 

CLASS  48.  Perfumery  (including  toilet  articles,  preparations 
for  the  teeth  and  hair,  and  perfumed  soap). 

CLASS  49.  Games  of  all  kinds  and  sporting  articles  not  in- 
cluded in  other  classes. 

CLASS  50.     Miscellaneous: 

(1)    Goods  manufactured  from  ivory,  bone  or  wood,  not 
included  in  other  classes. 


GREAT  BRITAIN  239 

(2)  Goods  manufactured  from  straw  or  grass,  not  in- 
cluded in  other  classes. 

(3)  Goods  manufactured  from  animal  and  vegetable  sub- 
stances, not  included  in  other  classes. 

(4)  Tobacco  pipes. 

(5)  Umbrellas,  walking  sticks,  brushes,  and  combs. 

(6)  Furniture  cream,  plate  powder. 

(7)  Tarpaulins,  tents,  rick-cloths,  rope,  twine. 

(8)  Buttons  of  all  kinds  other  than  of  precious  metal  or 
imitations  thereof. 

(9)  Packing  and  hose  of  all  kinds. 

(10)     Goods  not  included  in  the  foregoing  classes. 
Marking  Goods  :     "Registered  Trade  Mark." 

Legal  Proceedings. 

In  any  legal  proceeding  in  which  the  validity  of  the  registra- 
tion of  a  registered  trade  mark  comes  into  question  and  is  decided 
in  favor  of  the  proprietor  of  such  trade  mark,  the  Court  may  cer- 
tify the  same,  and  if  it  so  certifies  then  in  any  subsequent  legal 
proceeding  in  which  such  validity  comes  into  question,  the  pro- 
prietor of  the  said  trade  mark  on  obtaining  a  final  order  or  judg- 
ment in  his  favor  shall  have  his  full  costs,  charges,  and  expenses 
as  between  solicitor  and  client,  unless  in  such  subsequent  proceed- 
ing the  Court  certifies  that  he  ought  not  to  have  the  same. 

In  any  legal  proceeding  in  which  the  relief  sought  includes 
alteration  or  rectification  of  the  register,  the  Registrar  shall  have 
the  right  to  appear  and  be  heard,  and  shall  appear  if  so  directed 
by  the  Court.  Unless  otherwise  directed  by  the  Court,  the 
Registrar  in  lieu  of  appearing  and  being  heard  may  sub- 
mit to  the  Court  a  statement  in  writing  signed  by  him,  giving 
particulars  of  the  proceedings  before  him  in  relation  to  the  matter 
in  issue  or  of  the  grounds  of  any  decision  given  by  him  affecting 
the  same  or  of  the  practice  of  the  Office  in  like  cases,  or  of  such 
other  matters  relevant  to  the  issues,  and  within  his  knowledge  as 
such  Registrar,  as  he  shall  think  fit,  and  such  statement  shall  be 
deemed  to  form  part  of  the  evidence  in  the  proceeding. 

In  all  proceedings  before  the  Court  under  this  Act  the  costs 
of  the  Registrar  shall  be  in  the  discretion  of  the  Court,  but  the 
Registrar  shall  not  be  ordered  to  pay  the  costs  of  any  other  of  the 
parties. 

Laws  in  Force  to  Prevent  the  Sale  or  Importation   of  Goods 
Bearing  a  False  Indication  of  Origin. 

The  "Merchandise  Marks  Act,  1887,"  was  passed  with  the 
object  of  preventing  the  false  marking  and  false  trade  description 
of  goods.  It  is  an  offense  under  the  Act  to  forge  a  trade  mark, 


240  GREAT  BRITAIN 

o:  to  make  or  have  in  possession  any  machine  or  other  instrument 
for  the  purpose  of  forging-  a  trade  mark.  It  is  also  an  offense  to 
apply  any  false  trade  description  to  any  goods,  or  to  be  in  pos- 
session for  sale  of  any  goods,  to  which  a  false  description  or  trade 
mark  has  been  applied. 

A  "trade  mark"  is  defined  so  as  to  include  foreign  trade  marks 
entitled  to  protection  in  the  United  Kingdom  as  well  as  trade 
marks  registered  in  the  United  Kingdom. 

A  "trade  description"  is  defined  as  meaning  any  description, 
statement,  or  other  indication,  direct  or  indirect, — 

(1)  As  to  the  number,  quantity,  measure,  gauge,  or  weight 
of  any  goods ; 

(2)  As  to  the  place  or  country  in  which  the  goods  were  pro- 
duced. 

(3)  As  to  the  mode  of  manufacture  of  such  goods ; 

(4)  As  to  the  materials  of  which  they  are  composed;  or 

(5)  As  to  their  being  the  subject  of  any  existing  trade  mark 
or  copyright. 

A  "false  trade  description"  means  a  trade  description  which  is 
false  in  a  material  respect  as  regards  the  goods  to  which  it  is 
applied. 

An  application  includes  not  only  a  direct  application,  but  an 
application  to  any  cover,  label,  etc.,  in  or  with  which  the  goods 
are  sold,  and  also  placing  goods  in  any  cover,  label,  etc.,  to  which 
a  trade  mark  or  trade  description  has  been  applied. 

Offenses  under  this  Act  are  punishable  by  imprisonment  and 
by  a  fine  and  forfeiture  of  the  goods  concerned.  It  is  competent 
to  any  one  to  put  the  law  in  motion  for  the  punishment  of  the 
offender,  and  under  "The  Merchandise  Marks  Acts,  1891  and 
1894,"  the  Board  of  Trade  and  the  Board  of  Agriculture  respec- 
tively are  authorized  to  prosecute  at  the  public  expense  in  cases 
affecting  the  general  interests  of  the  country,  or  of  a  section  of 
the  community  or  of  a  trade. 

The  Act  prohibits  the  importation  of  all  goods  which  if  sold 
would  be  liable  to  forfeiture,  viz :  goods  to  which  a  false  trade 
mark  or  a  false  trade  description  has  been  applied.  The  interests 
of  foreign  manufacturers  and  trading  communities  are  thereby 
safeguarded  in  that  the  prohibition  applies  to  imported  goods 
bearing  directly  or  indirectly  an  indication  of  manufacture  or 
production  in  a  foreign  country  other  than  the  foreign  country 
in  which  the  goods  were  actually  manufactured  or  produced, 
while  as  regards  the  importation  of  goods  falsely  bearing  an 
indication  of  British  origin,  the  Act  expressly  prohibits  the  im- 
portation of  "all  goods  of  foreign  manufacture  bearing  anv  name 
or  trade  mark  being  or  purporting  to  be  the  name  or  trade  mark 
of  any  manufacturer,  dealer,  or  trader  in  the  United  Kingdom, 
unless  such  name  or  trade  mark  is  accompanied  by  a  definite 
indication  of  the  country  in  which  the  goods  were  made  or  pro- 


GREAT  BRITAIN  241 

duced."  In  this  way  Great  Britain  has  given  effect  to  the  stipu- 
lations of  the  International  Conventions  for  the  Protection  of  In- 
dustrial Property,  signed  at  Paris  in  1883,  and  at  Brussels  in 
1900,  and  of  the  arrangement  of  Madrid,  1891,  for  the  prevention 
of  false  indications  of  origin  on  goods. 

But  while  "The  Merchandise  Marks  Act,  1887,"  prohibits  the 
false  marking  and  false  trade  description  of  all  goods,  whether 
home  or  foreign,  it  does  not  prescribe  the  compulsory  marking 
of  the  country  of  origin  of  imported  goods,  and  consequently 
the  Customs  Regulations  provide  that  "goods  imported  into  the 
United  Kingdom  which  do  not  bear  any  mark  whatever,  either 
on  the  goods  themselves  or  on  the  coverings  containing  them, 
are  not  subject  in  any  way  to  the  Act,  and  therefore  need  not 
bear  any  statement  or  indication  such  as  "Made  Abroad."  "Made 
in  Germany,"  etc. 

DECISIONS. 

Priority  of  Use. 

The  mark  applied  for  was  the  word  "Multigraph,"  claimed  to 
have  been  in  use  by  the  applicants  for  eighteen  years  in  Great 
Britain  and  elsewhere,  and  of  this  fact  there  seemed  to  be  no 
question.  The  opposition  seemed  to  have  been  based  upon  the  sole 
ground  that  the  mark  had  for  some  years  prior  to  the  applica- 
tion been  in  use  by  the  opponent,  although  the  latter's  use  of  the 
mark  was  very  much  later  than  the  applicant's,  having  in  fact, 
covered  a  period  of  only  about  two  years.  The  court  remarked : 

"The  argument  against  the  decision  of  the  Registrar  was 
founded  on  the  proposition  that  where,  at  the  time  of  the 
application  for  the  registration  there  is,  however  recently, 
another  person  who  is  using  either  the  trade  mark,  or  a 
name  identical  with  the  trade  mark,  the  court  will  not  pro- 
ceed to  register,  but  will  require  the  applicant  to  enforce 
such  rights  as  he  has  at  law  before  dealing  with  the  matter 
at  all.  That  argument  is  obviously  based  on  the  idea  that 
outside  of  registration  there  can  be  no  proprietorship  of  a 
trade  mark,  and  that  the  only  possible  claim  of  the  appli- 
cant is  a  claim  for  passing  off  which  must  be  decided  before 
registration  could  be  obtained." 

The  court  finds  from  an  examination  of  the  statute,  however, 
that  this  contention  is  without  foundation.  Citing  several  sec- 
tions of  the  Trade  Marks  Act,  and  particularly  Section  41, 
which  provides  that  the  registration  of  a  trade  mark  shall  not  in 
any  way  permit  the  registrant  to  interfere  with  or  restrain  the 
use  of  a  similar  trade  mark  by  any  person  who  has  used  the 
same  at  a  date  prior  to  the  use  of  the  mark  by  the  registrant 
thereof,  and  Section  42,  which  provides  that  no  proceeding  shall 
be  brought  to  prevent  or  recover  damages  for  infringement  of 

16 


"»42  GREAT  BRITAIN 

an  unregistered  trade  mark,  except  in  certain  specific  cases,  the 
court  concludes  that,  while  there  is  a  prohibition  against  the 
recovery  of  damages  or  the  prevention  of  infringement  prior  to 
registration,  the  statute  does  not,  by  any  means,  ignore  the  right 
of  ownership  acquired  by  priority  of  use.  (Kenrick  &  Jefferson, 
Ltd.,  2G  Reps,  of  Pat.,  etc.,  Cases  641.) 

Concurrent  User. 

The  British  Trade  Mark  Law,  Section  21,  provides  that  in 
cases  of  honest  concurrent  user  of  a  trade  mark,  the  same  mark 
may  be  registered  to  two  or  more  applicants.  In  1909  a  Danish 
firm  registered  the  word  "Alpha"  as  a  trade  mark  for  certain 
engines  and  in  the  following  year  an  English  firm  applied  for 
an  order  to  correct  the  register  by  cancelling  the  mark,  claiming 
that  they  had  used  the  mark  on  the  same  goods  since  1903,  and 
prior  to  any  use  of  the  mark  by  the  Danish  firm  in  Great 
Britain.  The  evidence  showed  no  use  of  the  Danish  firm  prior 
to  1908,  although  they  claimed,  that  they  had  used  the  mark  out- 
side of  Great  Britain  for  a  much  longer  period  than  the  English 
firm  had  used  it,  and  that  this  fact  made  a  case  of  concurrent 
user,  to  be  dealt  with  by  the  registrar  in  accordance  with  the 
provisions  of  the  statute  governing  such  cases.  The  Danish  firm 
offered  to  submit  to  any  reasonable  limitation  of  their  use  of 
the  word,  as  for  example,  by  prefixing  thereto  the  word 
"Danish"  and  restricting  the  use  of  the  mark  to  such  engines  as 
it  had  heretofore  been  used  upon.  Nevertheless,  it  was  held  that 
this  was  not  a  case  of  concurrent  user  and  an  order  was  made 
directing  the  cancellation  of  the  mark.  (Hoemouller,  Rep.  of 
Pat.,  etc.,  Cases,  1911,  p.  249.) 

Descriptive  Terms. 

A  firm  that  had  for  many  years  been  engaged  in  the  sale  of 
waterproof  garments  sought  to  enjoin  the  defendants  from  sell- 
ing goods  or  overcoats  under  the  name  of  <;slip-on,"  or  from 
otherwise  passing  off  their  goods  as  goods  of  the  plaintiff. 
Plaintiff  claimed  that  it  had  adopted  the  mark  in  the  year  1894 
and  had  used,  it  continuously  since  then  upon  waterproof  gar- 
ments. That  by  reason  of  such  use,  the  name  had  become  dis- 
tinctive of  the  plaintiff's  garments  and  meant,  both  to  the  trade 
and  the  public,  garments  of  the  manufacture  of  the  plaintiff,  and 
none  other.  That  the  defendants  were  selling  goods  of  their 
own  manufacture  under  that  mark,  whereby  the  public  were 
likely  to  be  deceived  into  the  belief  that  the  goods  were  the  plain- 
tiff's goods.  The  defendants  claimed  that  the  word  "slip-on" 
was  a  common  English  word  in  general  use,  having  reference 
only  to  a  particular  cut  or  fit.  That  it  had  been  in  use  in  that 
sense  long  before  its  use  by  the  plaintiff  and  that  the  defendants 


GREAT  BRITAIN  243 

had  only  used  it  in  its  descriptive  sense  and  in  its  ordinary 
meaning.  No  evidence  of  deception  was  offered  and  the  plain- 
tiff's case  rested  entirely  on  the  probability  of  deception.  The 
court  said  that,  in  passing  upon  the  rights  to  use  a  word  of  this 
character,  its  prima  facie  descriptive  nature  should  be  taken  into 
account,  as  also  the  manner  in  which  it  was  used  by  the  defend- 
ants, whether  as  a  distinguishing  mark  for  their  goods,  or  simply 
to  denote  or  describe  the  kind  of  article.  Having  in  view  the 
history  of  the  word  and  its  use  for  a  matter  of  a  century,  both 
publicly  and  in  the  trade,  the  court  said  that  there  was  no 
probability  of  deception  arising  from  the  defendant's  use  of  the 
term.  (Burberry's  vs.  Cording  Co.  Ltd.,  XXVI  Rep.  of  Pat., 
etc.,  Cases  693.) 


Upon  an  application  for  the  alteration  of  certain  registered 
trade  marks  by  the  addition  of  the  words  "Incorporated  by 
Royal  Charter,  1773,"  the  High  Court  of  Justice,  Chancery  Di- 
vision, upheld  the  decision  of  the  registrar  in  refusing  to  regis- 
ter the  mark  because  it  included  the  word  "Royal,"  the  use  of 
which  in  a  trade  mark  is  absolutely  prohibited  by  the  rules.  The 
court  thought  that  the  reason  of  the  rule  was  to  prohibit  the 
registration  as  part  of  a  mark  of  any  words  calculated  to  lead 
to  the  belief  that  the  applicant  enjoyed  royal  patronage  and  holds 
that  the  registrar  had  acted  wisely  and  rightly  in  refusing  the 
registration.  The  rule  is  not  limited  to  cases  where  the  use  of 
the  word  would  be  erroneous,  or  a  false  description  of  the  goods. 
(Ex  parte,  Carron  Co.,  The  Times,  London,  April  28,  1910.) 

The  word  "Diamine"  as  a  trade  mark  for  dyes  is  descriptive, 
being  a  well  known  chemical  term,  indicating  a  certain  composi- 
tion, although  for  upwards  of  twenty  years  it  was  known  in  the 
trade  as  indicative  of  the  goods  of  a  particular  manufacturer.  It 
was  said  that  the  applicant  cannot  derive  any  advantage  from 
the  fact  that  the  word  is  intelligible  only  to  persons  having  some 
knowledge  of  chemistry  and  that  the  mark  was  properly  re- 
fused registration.  (Cassella  &  Co.,  The  Times,  London,  May 
10,  1910.) 

Schweppe's  Soda  Water  Case. 

Action  for  passing  off  Defendant's  goods  as  Plaintiff's. — 
Alleged  similarity  of  get-up. — Copying  by  Defendant  held  not 
proved.  Probability  of  deception  not  established. 

Schweppe  Company,  Ltd.,  sold  soda  water  in  bottles  with  a 
neck  label  around  them,  the  body  of  the  label  being  of  chocolate 
color,  with  a  white  border  and  a  red  medallion  in  the  center  of 
the  label.  The  defendant  subsequently  sold  soda  water  in  bot- 
tles with  a  somewhat  similar  neck  label  around  them  of  the 
same  color,  and  with  a  central  red  medallion.  Schweppe's  labels 
had  "Schweppe's  Soda  Water"  printed  on  them  in  white  char- 


244  GREAT  BRITAIN 

acters.  The  defendant's  had  ''Gibbens'  Soda  Water."  The 
medallions  in  the  center  also  differed.  An  action  having  been 
brought  by  Schweppe  against  Gibbens,  held  at  the  trial  that  the 
plaintiffs  had  not  established  that  the  defendant's  labels  were 
calculated  to  deceive,  and  the  action  was  dismissed  with  costs. 

The  higher  court  rested  its  decision  upon  substantially  the 
same  ground  as  the  lower  court,  holding  that  confusion  would 
result  only  in  a  case  where  the  purchaser  failed  to  examine  the 
labels  upon  the  bottles.  A  person  must,  as  the  court  said,  "treat 
the  label  fairly"  and  must  not  purchase  without  sufficient  con- 
sideration and  without  examining  what  appears  upon  the  face  of 
the  label.  If  he  does  so,  whatever  confusion  does  result  is  not 
the  fault  of  the  maker  of  the  goods.  ("Schweppe's  Ltd.,  vs.  Gib- 
bens, 22  Kept,  of  Pat.,  etc.,  Cases,  601.) 

Liability  for  False  Claim  to  Trade  Mark  Registration. 

Section  67  of  the  British  Trade  Marks  Act  of  1905,  provides 
that  any  person  who  represents  a  trade  mark  as  registered  which 
is  not  so  registered,  whether  by  the  use  of  the  word  "registered" 
in  connection  with  the  trade  mark,  or  otherwise,  shall  be  liable 
for  every  offense  to  a  fine  not  exceeding  five  pounds. 

In  a  prosecution  instituted  in  the  Sheffield  Police  Court  under 
this  section,  a  dealer  who  had  placed  on  sale  a  food  under  the 
name  "Milxo"  which,  on  the  boxes,  was  falsely  stated  to  be  a 
registered  trade  mark,  was  convicted  and  fined  three  pounds. 
The  dealer  sought  to  excuse  himself  in  this  instance,  by  claim- 
ing that  he  had  written  to  the  Registrar  of  Trade  Marks  to  know 
whether  the  mark  could  be  registered  and  had  gone  on  with  the  use 
of  it,  marking  the  labels  "registered"  in  anticipation  of  the  regis- 
tration he  contemplated  making. 

Conflicting  Trade  Marks. 

The  High  Court  of  Justice,  Chancery  Division,  had  held  that 
the  word  "Colonel"  was  not  infringed  upon  by  the  use  of 
the  word  "Colonial"  as  a  trade  mark  for  the  same  goods,  to-wit : 
golf  balls.  The  court  points  out,  in  distinguishing  the  two  marks, 
that  the  former  is  a  word  of  three  syllables,  invariably  accented 
on  the  first  syllable,  while  the  second  is  a  word  of  four  syllables, 
accented  on  the  second  syllable,  and,  accordingly,  that  the  words 
are  entirely  dissimilar  in  sound  when  pronounced.  Moreover  there 
is  no  common  association  by  the  ear  of  any  sort  or  kind  attaching 
to  the  meaning  of  the  two  words.  Therefore,  it  would  seem  to  be 
impossible  that  any  person  of  reasonable  capacity  should  be  misled 
by  such  similarity  as  exists  between  the  words,  for,  whether 
printed  or  spoken,  both  to  the  eye  and  ear,  they  represent  two 
totally  distinct  things.  (St.  Mungo  Mfg.  Co.  vs.  Viper  &  Recov- 
ering Co.,  27  Rep.  of  Pat.,  etc.,  Cases,  120.) 


GREAT  BRITAIN  245 

The  Appeals  Court  has  unanimously  upheld  the  claim  of  the 
Carthusian  monks  to  the  exclusive  right  to  use  the  word  Char- 
treuse in  Great  Britain  as  describing  the  famous  liquor,  thus  re- 
versing the  decision  of  the  lower  court.  It  also  condemned  the 
defendants  to  pay  the  costs  of  the  action  and  enjoined  them  from 
using  the  name  Chartreuse. 

The  court  ordered  further  that  an  inquiry  be  made  to  ascertain 
the  damage  sustained  by  the  Carthusians  by  the  defendants'  illegal 
use  of  the  name. 

"Gramophone"  a  Generic  Term. 

The  British  High  Court  of  Justice,  Chancery  Division,  has  held 
upon  an  application  by  the  Gramophone  Co.,  Ltd.,  to  register  that 
word  as  a  trade  mark,  that  although  in  the  trade  that  word  dis- 
tinguishes the  goods  of  the  applicant,  yet,  to  the  general  public, 
it  merely  denotes  a  disk  machine  as  distinguished  from  a  cylinder 
machine  without  any  reference  to  the  source  of  manufacture. 
The  court  said  it  could  not  see  that  the  word  was  any  more  adapted 
to  distinguish  the  manufacturer  of  the  goods,  than  the  word 
"match"  was  .to  distinguish  the  matches  of  one  maker  from  those 
of  another;  that  is  to  say,  the  name  by  which  an  article  is  popu- 
larly known  should  not  be  entitled  to  registration,  although  the 
trade  may  understand  it  as  the  name  of  an  article  of  a  particular 
manufacturer. 

The  Limitation  to  Classes. 

It  is  a  familiar  fact  that  in  the  United  States  law  the  registration 
of  a  trade  mark  is  confined  to  the  goods  upon  which  the  mark  has 
been  used  by  the  applicant  prior  to  registration.  In  Great  Britain 
this  is  not  so.  A  classification  is  in  force  similar  to  that  used  in 
the  United  States  Patent  Office,  but  instead  of  confining  the  regis- 
tration to  the  goods  upon  which  the  mark  has  been  used  by  the 
applicant,  registration  is  permitted  irrespective  of  use  and  may  be 
made  to  cover  all  the  goods  in  any  class.  This  is,  however,  because 
the  law  regards  registration  as  equivalent  to  use.  The  law  does 
not  permit  the  registrant  to  monopolize  the  mark  for  all  goods 
in  the  class  for  which  he  has  registered,  unless  he  makes  use  of 
the  mark  upon  those  goods.  Where  he  has  failed  to  do  so,  the 
scope  of  his  registration  may  be  limited  upon  the  motion  of  any 
interested  party,  to  the  goods  upon  which  the  mark  has  actually 
been  used  by  him. 

The  operation  of  the  Act  in  this  respect  was  shown  in  a  case 
before  the  Chancery  Division  of  the  High  Court  of  Justice.  A 
trade  mark  had  been  registered  for  all  the  goods  in  Class  forty- 
two,  consisting  of  the  name  "John  Bull"  with  the  figure  of  John 
Bull.  Another  firm  were  large  manufacturers  of  toffee  and  sweet- 
meats, which  they  had  for  a  long  time  sold  under  a  similar  trade 
mark.  They  having  applied  for  the  registration  of  the  mark  for 


246  GREAT  BRITAIN 

the  goods  in  question  which  fell  in  Class  Forty-two,  the  applica- 
tion was  refused,  because  of  the  earlier  registration  of  the  same 
mark  for  all  the  goods  in  that  class.  The  registrant,  having  refused 
to  accede  to  their  request  to  limit  his  registration  so  as  to  exclude 
toffee  and  sweetmeats,  a  motion  was  made  to  limit  the  registra- 
tion accordingly.  After  some  discussion  as  to  the  question  of 
whether  the  goods  excluded  should  be  confectionary  or  sweet- 
meats, in  view  of  certain  malt  products  manufactured  by  the  regis- 
trant and  sold  for  use  in  the  manufacture  of  candy,  an  order  was 
made  limiting  the  registration  so  as  to  exclude  toffee  and  con- 
fectionary, with  costs  against  the  registrant.  (Paine  &  Co.,  Ltd., 
25  Rep.  of  Pat.,  etc.,  Cases,  p.  329.) 

Unauthorised  use  of  "Red  Cross"  and  "Geneva  Cross." 

An  Act  to  make  such  amendments  in  the  Law  as  are  necessary 
to  enable  certain  reserved  provisions  of  the  Second  Geneva  Con- 
vention to  be  carried  into  effect. 

(18th  August,  1911.) 

WHEREAS,  His  Majesty  has  ratified,  with  certain  reservations, 
the  Convention  for  the  amelioration  of  the  condition  of  the 
wounded  and  sick  of  armies  in  the  field,  drawn  up  in  Geneva  in 
the  year  one  thousand  nine  hundred  and  six,  and  it  is  desirable, 
in  order  that  those  reservations  may  be  withdrawn,  that  such 
amendments  should  be  made  in  the  law  as  are  in  this  Act  con- 
tained ; 

Be  it  therefore  enacted  by  the  King's  most  Excellent  Majesty, 
by  and  with  the  advice  and  consent  of  the  Lords  Spiritual  and 
Temporal,  and  Commons,  in  this  present  Parliament  assembled, 
and  by  the  authority  of  the  same,  as  follows : 

1.  (a)  As  from  the  commencement  of  this  Act  it  shall  not  be 
lawful  for  any  person  to  use  for  the  purposes  of  his  trade  or  busi- 
ness, or  for  any  other  purpose  whatsoever,  without  the  authority 
of  the  Army  Council,  the  heraldic  emblem  of  the  red  cross  on  a 
white  ground  formed  by  reversing  the  Federal  colors  of  Switzer- 
land, or  the  words  "Red  Cross"  or  "Geneva  Cross,"  and,  if  any 
person  acts  in  contravention  of  this  provision,  he  shall  be  guilty 
of  an  offense  against  this  Act,  and  shall  be  liable  on  summary 
conviction  to  a  fine  not  exceeding  ten  pounds,  and  to  forfeit  any 
goods  upon  or  in  connection  with  which  the  emblem  or  words 
were  used. 

(&)  Where  a  company  or  society  is  guilty  of  any  such  contra- 
vention, without  prejudice  to  the  liability  of  the  company  or  so- 
ciety, every  director,  manager,  secretary,  and  other  officer  of  the 
company,  or  society,  who  is  knowingly  a  party  to  the  contraven- 
tion shall  be  guilty  of  an  offense  against  this  Act  and  liable  to  the 
like  penalty. 

(c)    Nothing  in  this  section  shall  affect  the  right  (if  any)  of 


GREECE  247 

the  proprietor  of  a  trade  mark  registered  before  the  passing-  of  this 
Act,  and  containing  any  such  emblem  or  words,  to  continue  to 
use  such  trade  mark  for  a  period  oi  four  years  from  the  passing 
of  this  Act,  and,  if  the  period  of  the  registration  or  of  the  renewal 
of  registration  of  any  such  trade  mark  expires  during  those  four 
years,  the  registration  thereof  may  be  renewed  until  the  expira- 
tion of  those  four  years,  but  without  payment  of  any  fee. 

(d)  Proceedings  under  this  Act  shall  not  in  England  or  Ire- 
land be  instituted  without  the  consent  of  the  Attorney-General. 

(e~)  This  Act  shall  extend  to  His  Majesty's  possessions  outside 
of  the  United  Kingdom,  subject  to  such  necessary  adaptations  as 
may  be  made  by  Order  in  Council. 

2.   This  Act  may  be  cited  as  the  Geneva  Convention  Act,  1911. 


GREECE 

The  area  of  the  kingdom  of  Greece  (including  the  Ionian 
Islands)  is  about  24,600  English  square  miles.  The  population  in 
1911  was  estimated  to  be  about  3,100,000. 

COMMERCE — The  staple  product  of  the  country  is  currants,  and 
upon  this  crop  the  prosperity  of  the  country  almost  entirely  de- 
pends. The  rest  of  the  exports  consist  chiefly  of  olive  oil,  olives, 
sponges,  minerals,  zinc,  tobacco,  wine,  lead  and  valonia. 

The  imports  consist  chiefly  of  cereals,  textile  goods,  coal,  min- 
erals, timber,  codfish,  chemicals,  live  stock,  etc. 

MONEY — Drachmas=100  lepta=9.6d.  (nominal  value)=19 
cents  United  States.  The  currency  drachma  is  worth  about  6d., 
but  varies=12  cents  United  States. 

WEIGHTS  AND  MEASURES — Oke=2.8  Ibs.  avoirdupois=1.280 
kil.  Dramion=0.111  ounce=0.0032  kil.— Oke  of  capacity=2.34 
pints=1.515  litre. 

Laws. 

Laws  of  February  10-22,  1893.  Regulations  of  December 
18-30,  1893. 

Duration. 

Legal  protection  is  assured  for  ten  years  from  the  date  of 
deposit;  by  a  new  deposit  in  the  same  form,  this  term  may  be 
extended  for  a  new  period  of  ten  years.  He  alone  has  the  right 
to  make  such  a  deposit  who  has  been  the  first  to  use  the  mark 
publicly  and  for  one  year  without  interruption.  (Art.  2.) 

Who  May  Register. 

Foreigners  and  Greek  subjects  carrying  on  their  industry  or 
commerce  outside  of  Greece  shall  enjoy  the  benefit  of  this  law 
if,  in  the  country  where  they  are  located,  there  is  a  law  for  the 


248  GREECE 

protection  of  trade  marks  and  a  diplomatic  convention  for  the 
reciprocal  protection  of  Greek  trade  marks.    (Art.  13.) 

What  May  be  Registered. 

Any  distinctive  mark  of  the  products  of  industry,  of  agriculture, 
of  stock  breeding  and  of  commerce  in  general,  is  considered  as  a 
trade  mark.  The  mark  may  be  affixed  to  the  product  itself  or  to 
the  package  that  contains  it;  and  the  name  of  a  manufacturer 
or  merchant  or  the  firm  name  of  either  shall  be  considered  as  a 
trademark.  (Art.  1.) 

Mode  of  Application. 

Application  must  be  made  by  the  applicant  or  by  his  attorney. 
Full  address  of  the  applicant  must  be  given,  together  with  a  de- 
scription of  the  principal  establishment,  statement  for  what  prod- 
ucts the  trade  mark  is  intended,  in  what  manner  the  trade  mark  is 
placed  on  the  product,  whether  on  itself  or  on  wrappers,  bottles, 
etc.,  if,  for  intance,  the  trade  mark  is  printed  on  paper  and  attached 
to  the  products  or  to  wrappers,  and  in  what  other  manner  the 
trade  mark  is  utilized,  whether  the  printing  or  impression  of  the 
trade  mark  is  made  in  the  original  size ;  three  copies  of  the  mark 
upon  detached  paper  8x10  cm.,  electrotype  of  the  same  dimen- 
sions. 

Documents  Required. 

Certified  copy  of  home  registration,  legalized  by  Greek  Consul ; 
legalized  power ;  three  copies  of  the  mark  and  a  metal  typographic 
block. 

Provided  that  it  shall  be  necessary  for  the  enjoyment  of  this 
privilege  in  Greece,  besides  the  deposit  of  the  mark,  (1)  to  produce 
a  certificate  from  competent  local  authority,  authenticated  by  the 
Greek  Consul,  establishing  the  fact  that  the  formalities  have  been 
accomplished  required  by  the  laws  of  the  applicant's  country  to 
secure  protection  of  the  mark;  (2}  to  elect  a  domicile  at  Athens 
before  a  notary;  (3)  to  declare  in  writing  that  the  applicant 
submits  to  the  jurisdiction  of  the  Athenian  tribunals.  The  effect 
of  protection  in  Greece  shall  terminate  when  the  period  of  protec- 
tion fixed  by  law  shall  expire,  or  if  the  Diplomatic  Convention 
for  Reciprocity  shall  cease  to  be  in  force.  In  no  case  can  foreign- 
ers or  Greeks  residing  abroad  have  a  larger  protection  in  Greece 
for  their  trade  marks  than  they  enjoy  in  the  country  where  their 
establishment  is  situated.  (Art.  13.) 

Assignments. 

The  title  to  a  trade  mark  cannot  pass  to  another  except  with 
the  right  to  deal  in  the  product.  This  transfer  shall  .have  no  effect 
with  respect  to  third  parties  until  after  the  deposit  and  the  publi- 


GREECE 


249 


cation  of  an  extract  from  the  instrument  which  shall  verify  it  in 
the  forms  prescribed  in  Articles  2  and  4.  The  transfer  shall  also 
be  noted  on  the  margin  of  the  record  of  deposit  of  the  mark,  and 
this  note  shall  be  attested  by  the  signature  required  by  Article  3. 
It  shall  be  subject  to  a  fee  of  thirty  drachmas  in  gold,  the  receipt 
of  which  shall  be  entered  on  the  record.  (Art.  5.) 

Infringement  and  Penalties. 

The  penalty  of  imprisonment  of  not  less  than  six  months  and  a 
fine  not  exceeding  1,000  drachmas,  or  either  of  these,  shall  be  im- 
posed upon — 

(1)  Whoever  counterfeits  a  trade  mark  or  makes  a  fraudulent 
use  of  a  counterfeit  mark ; 

(2)  Whoever  shall  have  fraudulently  affixed  to  his  product 
a  mark  that  belongs  to  another ; 

(3)  Whoever,  without  counterfeiting  a  mark,  shall  have  made 
an  imitation  of  a  nature  to  deceive  or  shall  have  used  such  imita- 
tion. 

(4)  Whoever  shall  have  knowingly  sold  or  put  on  sale  an 
article  bearing  a  counterfeit  mark. 

Public  prosecution  for  the  offenses  contemplated  in  this  article 
cannot  be  instituted  until  ten  days  after  the  insertion  in  the  Official 
Journal  required  by  Article  4,  and  for  an  act  committed  after  the 
expiration  of  that  period.  Nevertheless,  the  depositor  can  from 
the  day  following  the  deposit  sue  in  a  civil  acton  for  the  judicial 
recognition  of  his  right  to  the  exclusive  use  of  the  mark,  and  then 
offenses  committed  subsequent  to  legal  notice  of  the  civil  action 
may  be  prosecuted  even  in  advance  of  the  publication  in  the 
Official  Journal.  (Art.  6.) 

The  penalties  ordained  hereafter  may  be  doubled  in  the  case 
of  repetition  of  the  offense  when  the  latter  shall  occur  within  five 
years  from  the  date  of  the  earlier.  (Art.  7.) 

The  court  shall  order  that  every  judgment  be  inserted  at  the  cost 
of  the  offender  in  two  journals  at  the  capital,  if  the  offense  has 
been  committed  in  Athens,  or  if  elsewhere,  in  one  journal  of 
Athens  and  another  of  the  place  where  the  offense  was  committed. 
(Art.  8.) 

The  court  shall  order  in  every  case — even  in  that  of  acquittal — 
the  destruction  of  the  counterfeit  marks.  If  the  mark  cannot  be 
destroyed  without  injury  to  the  article  to  which  it  is  affixed,  the 
court  may  order  the  total  or  partial  destruction  of  the  article  also. 
(Art.  9.) 

Beside  the  penalties  above  named,  whoever  shall  infringe  the 
present  law  shall  be  bound  to  make  good  the  damage  he  has 
caused  the  merchandise  bearing  a  counterfeit  mark  and  the  instru- 
ments employed  to  perpetrate  the  offense  may  be  awarded  by  the 
court  to  the  injured  party,  if  they  belong  to  the  guilty  person; 
and  if  the  injured  party  has  commenced  an  action  for  damages 


250  GREECE 

and  has  accepted  same,  upon  a  summary  valuation  made  by  the 
court,  for  the  whole  or  part  of  the  compensation.  (Art.  10.) 

No  public  prosecution  can  be  instituted  but  on  the  complaint  of 
the  injured  party.  (Art.  11.) 

The  registry  of  a  mark  which  shall  not  have  been  made  in  con- 
formity with  the  provisions  of  the  present  law  may  be  declared  void 
by  the  tribunal  by  whose  clerk  it  may  have  been  registered,  on 
the  demand  of  any  interested  third  party.  The  extract  from  the 
judgment  shall  be  entered,  at  the  instance  of  the  complainant,  on 
the  margin  of  the  record,  within  one  month  from  the  date  when 
it  shall  be  in  force,  under  penalty  of  a  fine  of  not  less  than  twenty- 
five  drachmas.  Every  private  dispute  resulting  from  an  action 
under  this  law  shall  be  determined  by  the  tribunal  of  first  in- 
stance as  an  affair  of  commerce,  unless  it  shall  have  been  insti- 
tuted, simultaneously  with  the  public  suit,  before  the  tribunal 
correctionel.  (Art.  12.) 

An  indemnity  shall  be  paid  from  the  public  treasury  to  the  clerks 
of  tribunals  of  the  first  instance  in  the  sum  of  two  drachmas  for 
each  record  of  deposit,  and  to  the  Director  of  the  School  of  Indus- 
trial Arts  in  the  same  sum  for  each  mark  registered.  These 
functionaries  shall  submit  triennial  statements,  under  supervision 
of  the  superior  hierarchs,  to  the  Minister  of  the  Interior,  who 
shall  give  them  orders  for  payment.  (Art.  14.) 

All  provisions  in  conflict  with  this  law  are  abolished.  (Art.  15.) 

A  royal  decree  will  prescribe  in  fuller  detail  the  deposit,  the 
publication  and  the  exhibition  of  the  marks,  as  well  as  everything 
concerning  the  execution  of  this  law.  (Art.  16.) 

Criminal  action  is  prescribed  after  one  year,  as  is  the  case  with 
all  injustices  subject  to  criminal  charges  (Articles  119,  120.  par.  2, 
121  Common  Criminal  Statutes). 

Civil  action  is  subject  to  the  thirty-year  limitation  of  the  Roman 
and  Imperial  Right. 

The  Court  of  First  Instance  is  formed  by  the  President,  two 
Justices,  the  Prosecutor  and  the  Secretary. 

The  Court  of  Appeals  by  the  President,  four  Justices,  the 
Prosecutor  and  the  Secretary. 

The  Court  of  Peace  by  the  Justice  of  the  Peace  and  the  Secre- 
tary. 

The  Areopagus  (Supreme  Court)  by  the  President  or  Vice- 
President,  six  Justices,  the  Attorney-General  and  the  Secretary. 

*Laws  in  Force  to  Prevent  the  Sale  or  Importation  of  Goods 
Bearing  a  False  Indication  of  Origin. 

No  laws  are  in  force  to  prevent  the  sale  or  importation  of  goods 
bearing  a  false  indication  of  origin,  but  some  of  the  Articles  of 
the  Penal  Code  relating  to  fraud  might  possibly  be  applicable. 
The  fraudulent  application  of  another  person's  mark  to  articles 
of  commerce  and  the  sale,  exhibition  for  sale  and  circulation  of 


GRENADA  251 

articles  bearing  fraudulently  imitated  or  counterfeit  marks  are 
punishable  offenses.  If  the  articles  of  the  Penal  Code  were  held 
to  apply,  proceedings  would  have  to  be  taken  by  an  injured  party 
who  would  have  to  prove  that  he  had  sustained  actual  damage. 
No  steps  are  taken  to  prevent  the  importation  of  goods  bearing 
a  false  indication  of  origin.  There  are  no  requirements  as  to  the 
marking  of  imported  goods  to  show  the  country  or  place  of  origin, 
or  to  denote  that  they  are  foreign. 

Decisions. 

The  house  of  J.  &  P.  Coats,  of  Paisley,  Scotland,  had  registered 
certain  trade  marks  in  Greece,  but  in  proceedings  brought  by  them 
against  infringers  these  registrations  had  been  declared  void,  be- 
cause of  certain  irregularities  in  the  registration.  Following  this 
decision  they  caused  their  marks  to  be  registered  anew  in  that 
country.  Before  the  second  registration,  the  infringing  mark  had 
been  registered  by  their  competitor.  In  a  criminal  proceeding 
instituted  by  Messrs.  J.  &  P.  Coats  against  the  infringers,  the 
latter  defended  on  the  ground  that  their  registration  being  prior 
in  point  of  time,  their  right  to  the  use  of  the  mark  was  superior. 
The  question  turned  on  the  construction  of  the  words  used  by 
the  Greek  law,  "The  first  who  has  previously  made  use  of  the 
mark,"  in  referring  to  the  persons  authorized  to  register.  The 
criminal  court,  construing  this  passage,  held  that  priority  of  regis- 
tration in  Greece  conferred  no  right  of  property  to  the  mark 
superior  to  that  of  one  who  had  made  use  of  the  mark  earlier; 
that  such  priority  of  use  was  the  only  basis  of  property  in  the  mark 
and  that,  as  the  boundaries  between  the  countries  of  the  com- 
plainant and  defendant  had  been  for  the  purposes  of  this  decision 
abolished  by  international  treaties,  it  made  no  difference  that  the 
earlier  use  of  the  complainant  was  in  a  foreign  country  and  not  in 
Greece. 

Accordingly,  the  defendants  were  sentenced  to  four  months 
imprisonment  and  to  the  payment  of  a  fine  of  1,000  drachmas  and 
their  registration  was  declared  void.  (La  Propriete  Industrielle, 
1904,  p.  189.) 


GRENADA 

The  area  of  this  island  (including  its  dependencies)  is  133  square 
miles,  with  an  estimated  population  of  72,682  on  31st  December, 
1911. 

MONEY,  WEIGHTS  AND  MEASURES — Same  as  Great  Britain. 

Lau's. 
Merchandise  Marks  Ordinance  of  1889,  No.  9. 


252  GUATEMALA 

Duration. 
Fourteen  years;  renewable. 

What  May  Be  Registered. 

Everything  registrable  in  Great  Britain  under  the  British  Act 
of  1883  may  be  registered  in  Grenada. 

Requirements. 
Power  of  attorney ;  copy  of  the  mark ;  electrotype  or  wood  cut. 

Penalties. 

Under  the  present  Merchandise  Marks  Act  passed  in  1887, 
which  was  a  re-enactment  of  an  Act  passed  in  1862,  these  Acts 
can  be  regarded  in  part  as  a  Criminal  Act  and  in  part  as  a  Customs 
Act.  It  is  a  Criminal  Act  in  so  far  as  it  imposes  penalties  on 
persons  who  imitate  trade  marks. 


GUATEMALA 

The  Republic  of  Guatemala  is  situated  on  the  Pacific  Coast  of 
Central  America.  It  has  an  area  of  104,200  sq.  kiloms.,  about 
42,000  English  square  miles,  with  185  kiloms.  of  coast  on 
the  Atlantic  and  260  kiloms.  on  the  Pacific,  and  a  population  in 
1911  of  2,000,000,  two-thirds  of  whom  are  Indians.  The  capital 
is  Guatemala,  situated  about  80  miles  from  the  sea,  population 
about  100,000.  Other  important  cities  are  Quezaltenago,  Anti- 
gua, Coban,  San  Marcos  and  Chiquimula.  A  railway  connects 
the  capital  with  the  port  of  San  Jose  on  the  Pacific,  and  a  rail- 
way connects  it  with  Port  Barrios,  called  formerly  Santa  Tomas, 
in  the  bay  of  Honduras. 

The  exports  consist  chiefly  of  coffee,  cane,  sugar,  cocoa  and 
bananas ;  gold,  silver,  iron,  copper,  lead,  marble,  gypsum,  rub- 
ber, sulphur  and  salt,  the  natural  products  of  the  country,  and 
wheat,  oats,  barley,  Indian  corn  and  beans.  Large  quantities  of 
excellent  lumber  are  to  be  found,  in  the  virgin  forests  all  over 
the  Republic.  In  the  forests  near  the  coast  may  be  found  ma- 
hogany, cedar,  walnut,  ebony  and  many  other  fine  and  hard 
woods;  cypress,  pine  and  oak  in  the  mountains.  Logwood 
abounds  in  the  department  of  Peten. 

MONEY — 1  Peso  (100  centavos)=2s.  8d.=56  cents. 

For  weigths  and  measures  the  metrical  system  has  been 
adopted. 

Laiv. 

Law:  May  13,  1899. 

Duration. 

Ten  years ;  renewable  every  ten  years. 


GUATEMALA 


253 


W hat  May  Be  Registered. 

The  following  shall  be  considered  trade  marks:  Denomina- 
tions of  objects,  or  names  of  persons,  under  a  particular  form, 
emblems,  monograms,  engravings  or  prints,  seals,  vignettes  and 
reliefs,  letters  and  numbers  with  special  design,  boxes  or  wrap- 
pers of  objects,  and  all  other  signs  by  which  it  is  desired  to  dis- 
tinguish the  articles  of  a  factory  or  the  objects  of  a  business. 
(Art.  1.) 

The  following  shall  not  be  considered  trade  marks : 

1.  Letters,   words,   names,   or  distinctive   signs   that   are  or 
should  be  used  by  the  state  alone. 

2.  The  form  given  to  the  product  by  the  manufacturer. 

3.  The  color  of  the  products. 

4.  The  terms  or  phrases  that  have  passed  into  general  use. 

5.  Designations  usually  employed  to  indicate  the  nature  of  the 
products  or  the  class  to  which  they  belong. 

6.  Designs  and  expressions  contrary  to  morality.     (Art.  3.) 

1.  The  coat  of  arms  of  the  Republic,  or  of  any  other  country, 
except  by  authority  of  the  respective  government. 

2.  The  portrait  of  any  person  other  than  the  manufacturer 
or  tradesman,  unless  it  is  with  his  consent. 

3.  Distinctive  signs  that  admit  of  confusion  with  other  regis- 
tered marks.     (Art.  12.) 

Requirments. 

Legalized  power  of  attorney ;  certified  cony  of  original  regis- 
tered trade  mark ;  ten  copies  of  the  mark. 

Mode  of  Application. 

All  those  desiring  to  obtain  the  ownership  of  a  mark  must 
apply  for  it  to  the  Department  of  Fomento.  (Art.  13.) 

The  application  for  a  trade  mark  shall  be  drawn  up  on  stamped 
paper  of  the  corresponding  class  and  must  be  accompanied : 

1.  By  two  samples  of  the  mark  or  the  distinctive  sign. 

2.  By  a  description  in  duplicate  of  the  mark  or  sign,  if  it 
consists  of  figures  or  emblems,   it  being  necessary  to   indicate 
the  class  of  objects  for  which  it  is  intended,  and  whether  it  is 
to  be  applied  to  products  of  one  factory,  or  to  objects  of  com- 
merce. 

3.  Bv  a  receipt  of  the  National  Treasury  showing  that  the 
tax  established  bv  Article  22  has  been  paid.     This  tax  shall  be 
returned  in  case  the  registration  of  the  mark  is  refused. 

4.  By  a  power  of  attorney  executed  in  due  form,  in  case  the 
interested  party  does  not  appear  personally.     (Art.  14.) 

The  application  for  the  ownership  of  a  mark  shall  be  pub- 
lished for  one  month  in  the  official  newspaper  and  shall  then  be 
referred  for  consideration  and  report  to  the  Office  of  Trade 


254  GUATEMALA 

Marks.  If  no  opposition  is  made,  and  the  report  is  not  unfavor- 
able, an  executive  decree  shall  be  issued  ordering  the  registra- 
tion of  the  mark.  The  original  record  shall  then  be  sent  to  the 
Trade  Mark  Office,  in  order  that  the  registration  should  be 
made  in  proper  form,  that  a  notice  of  the  number,  page,  and 
book  of  the  registry  should  be  written  on  the  original  record,  and 
that  all  the  papers  of  the  case  be  preserved  in  the  archives.  The 
certificate  of  the  inscription,  accompanied  by  one  of  the  copies 
of  the  registered,  mark,  shall  serve  the  owner  as  evidence  of  his 
ownership.  (Art.  18.) 

Fees. 

For  the  registration  and  certificate  of  a  mark,  whatever  its 
origin  may  be,  a  fee  of  $30  (pesos)  shall  be  paid.  For  the 
registration  and  certificate  of  transfer  the  fee  shall  be  $15.  For 
each  copy  of  the  certificate  $5  shall  be  paid,  in  addition  to  the 
value  of  the  stamped  paper  which  is  to  be  used.  These  fees  shall 
be  paid  into  the  National  Treasury.  (Art.  22.) 

Nullification  of  a  Trade  Mark. 

Third  parties  can  apply  for  the  nullification  of  a  mark: 

1.  When  the  inscribed  possessor  has  not  within  the  term  fixed 
by  Article  11  continued  to  exercise  the  industry  to  which  the 
mark  belongs. 

2.  When  there  are  circumstances  that  lead  to  the  belief  that 
the  tenor  of  the  mark  does  not  correspond  to  its  real  products, 
the  risk  of  misrepresentation  being  thus  imminent.      (Division 
3,  Art.  34.) 

3.  The  petition  for  the  nullification  of  a  mark  shall  be  filed 
before  the  courts,  and  the  inscribed  possessor,  or  his  heirs,  in 
case  of  death,  shall  be  made  defendants.     (Art.  32.) 

If,  before  or  after  the  commencement  of  the  suit,  the  mark 
is  transferred  to  another  person,  the  case  shall  continue  to  the 
end  against  those  who  have  succeeded  to  the  right.  (Art.  33.) 

Penalty. 

The  following  shall  be  punished  as  provided  in  Paragraph 
II,  Title  III,  Book  II  of  the  Penal  Code : 

1.  Those  who  counterfeit  or  imitate  in  any  way  a  trade  mark. 

2.  Those  who  place  on  the  products  or  articles  belonging  to 
their  business  a  mark  belonging  to  another  person. 

3.  Those  who  knowingly  sell,  place  on  sale,  offer  for  sale,  or 
circulate,  articles  with  counterfeited  marks  or  with  marks  fraud- 
ulently applied. 

4.  Those  who  knowingly  sell,  place  on  sale,  or  offer  for  sale, 
counterfeited  marks,  and  those  who  sell  authentic  marks  without 
knowledge  of  their  proprietor. 

5.  Those  who  with  fraudulent  intention  place,  or  cause  others 


GUATEMALA  255 

to  place,  on  an  article  of  merchandise  a  false  announcement  or 
designation  relating  to  the  registration  of  the  mark,  or  to  the 
nature,  quality,  quantity,  number,  weight  or  measure,  of  the 
same  article,  or  the  place  or  country  in  which  it  has  been  made 
or  prepared. 

6.  Those  who  knowingly  sell,  place  on  sale,  or  offer  for  sale 
merchandise  with  any  of  the  false  announcements  mentioned  in 
the  preceding  item.  (Art.  34.) 

The  offense  shall  be  deemed  committed  in  full  even  if  the 
counterfeited  trade  mark  is  not  affixed  to  all  the  objects  that  are 
to  be  marked.  Its  application  to  one  alone  shall  be  sufficient. 
(Art  35.) 

Assignments. 

The  property  in  a  mark  passes  to  the  heirs  and  may  be  trans- 
ferred by  contract  or  by  disposition  of  last  will  and  testament, 
provided  always  the  formality  is  fulfilled  that  is  referred  to  in 
Article  10  of  this  law.  Unless  the  transfer  is  noted  in  the  regis- 
ter the  successor  cannot  make  valid  the  absolute  right  to  which 
Article  4  refers.  (Art.  7.) 

(Article  4 — The  absolute  property  in  the  mark,  as  well 
as  the  right  to  oppose  the  use  of  any  other  which  might 
directly  or  indirectly  produce  confusion  between  the  pro- 
ducts, will  belong  to  the  manufacturer  or  merchant  who 
shall  have  fulfilled  the  requirements  demanded  by  this  law.) 

The  cession  or  sale  of  the  establishment  includes  that  of  the 
mark  except  in  case  of  stipulation  to  the  contrary,  and  the 
assignee  has  the  right  to  use  the  mark  that  designates  it  (the 
establishment)  even  though  it  be  a  name,  in  the  same  manner 
as  the  assignor,  without  other  restrictions  than  those  that  are 
expressly  imposed  in  the  contract  of  sale  or  cession.  (Art.  8.) 

The  contract  for  assignment  of  a  mark  must  be  inscribed  in 
the  office  in  which  it  is  registered  to  acquire  the  rights  that 
this  law  confers  for  registered  marks.  (Art.  9.) 

There  will  only  be  considered  as  a  registered  mark,  for  the 
effects  of  property  that  this  law  accords,  one  of  which  the  office 
has  made  the  corresponding  inscription.  (Art.  10.) 

Laws  in  Force  to  Prevent  the  Sale  or  Importation  of  Goods 
Bearing  a  False  Indication  of  Origin. 

The  law  prohibits  the  marking  of  goods  with  false  indications 
of  origin,  as  well  as  the  sale  or  offering  for  sale  of  goods  so 
marked.  The  sale  of  goods  bearing  a  false  trade  name  or  trade 
mark  is  a  punishable  offense.  A  trader  in  prosecuting  for  the 
above  offenses  would  not  encounter  any  great  difficulty  in  ob- 
taining a  conviction.  Prosecution  is  expensive.  No  steps  are 
taken  officially  to  prevent  the  importation  of  goods  bearing  false 


256  HAWAII 

indications   of   origin.      There   are   no  requirements   as   to   the 
marking-  of   imported  goods  to  show  the  country  or  place  of 
origin  or  to  denote  that  they  are  foreign. 
Marking  of  Goods:    "Marca  Registrada." 


HAWAII 

The  territory  of  Hawaii  was  annexed  by  the  United  States  of 
America  in  1898,  and  forms  now  one  of  the  Territories  of  that 
Republic.  It  is  situated  in  the  North  Pacific,  between  latitude 
19°  and  22°  north  and  longitude  154°  and  160°  west,  and  con- 
sists of  a  group  of  eight  islands  of  which  Hawaii  is  the  largest. 
The  total  area  of  the  group  is  about  6,700  square  miles,  and  the 
population  is  estimated  at  191,909. 

Nearly  the  whole  of  the  trade  is  carried  on  with  the  United 
States  of  America,  owing  to  the  protective  tariff  of  the  United 
States,  which  has  been  extended  to  these  islands. 

MONEY — 1  Dollar  (100  cents )=4s:  2d.=$1.00  United  States. 

WEIGHTS  AND  MEASURES — The  metric  system  has  been  adopted. 

Hawaiian  Trade  Mark  Registrations. 

The  Territory  of  Hawaii  forming  part  of  the  United  States, 
the  United  States  trade  mark  law  is  in  force  there  to  the  same 
extent  as  in  other  portions  of  our  territory  and  the  same  rights 
and  remedies  under  registration  in  the  United  States  Patent 
Office  are  enjoyed  before  federal  courts  of  that  Territory  as  are 
enjoyed  elsewhere  in  the  United  States.  There  is,  however,  a 
local  law  for  the  registration  of  trade  marks  there,  which  is 
similar  to  the  trade  mark  registration  laws  in  force  in  many  of 
the  states  of  the  Union. 

This  statute  appears  to  be  confined  in  its  operation  to  labels, 
and  does  not  extend  to  trade  marks  as  we  commonly  understand 
the  term.  It  provides  that  any  person,  firm  or  corporation  de- 
siring to  secure  the  exclusive  use  of  any  print,  label  or  trade 
mark  upon  any  goods  ''to  indicate  the  name  of  the  manufacturer, 
the  contents  of  the  packages,  the  quality  of  the  goods  or  direc- 
tions for  use,  may  obtain  a  certificate  of  the  registration  of  such 
print,  label  or  trade  mark."  It  will  be  seen  that  this  provision  of 
the  statute  contemplates  the  registration  of  a  complete  label  and 
that  a  technical  trade  mark  consisting  of  an  arbitrary  name  or 
design,  would  not  come  within  the  provision  of  the  statute. 

The  statute  provides  that  on  complying  with  the  requirements 
of  the  law  as  to  the  form  of  application,  the  applicant  shall  be 
entitled  to  a  certificate  of  registration,  and  that  this  certificate 
of  registration  shall  secure  the  applicant  exclusive  use  of  such 
print,  label  or  trade  mark  throughout  the  Territory  of  Hawaii, 


HONDURAS 


257 


for  the  term  of  twenty  years  from  the  date  thereof.     (Rev.  Stat 
of  Hawaii,  1905,  2671-2674.) 

The  principles  of  trade  mark  law  laid  down  by  the  Supreme 
Court  of  Hawaii  in  a  case  decided  by  that  court  in  the  year 
1895,  indicate  that,  so  far  as  technical  trade  marks  are  con- 
cerned, the  common  law,  as  in  force  in  the  United  States  is 
applied  there,  and  that  the  law  of  unfair  competition,  as  we  un- 
derstood it  in  the  United  States,  will  be  enforced  in  the  courts 
of  that  Territory.  In  the  case  in  question,  the  court  declares 
that  the  registration  of  a  trade  mark  is  not  essential  to  its  owner- 
ship, nor  to  the  right  to  sue  for  infringement,  the  object  of  the 
registration  being  merely  to  confer  a  convenient  method  of 
proving  adoption  of  the  trade  mark.  The  case  before  the  court 
was  one  of  unfair  competition  involving  the  title  of  two  news- 
papers, one  of  which,  it  was  claimed,  was  made  to  unfairly  re- 
semble the  other.  The  case  was  decided  in  favor  of  the  de- 
fendant upon  the  ground  that  there  was  no  such  resemblance 
between  the  two  titles  as  would  cause  anv  confusion  or  induce 
the  purchase  of  the  defendant's  paper  in  the  place  of  the  plain- 
tiff's. (Gear  vs.  Kenyon,  10  Hawaii,  162.) 


HONDURAS 

The  Republic  of  Honduras  contains  approximately  47,000 
English  square  miles. 

The  population  in  1911  was  about  700,000.  It  has  a  coast 
line  of  nearly  400  miles  on  the  Caribbean  Sea.  Chief  ports: 
Truxillo,  Puerto  Cortes,  Omoa,  Roatan  and  La  Ceiba,  but  only 
a  small  portion  on  the  Gulf  of  Fonseca  on  the  Pacific  side.  Chief 
port,  Amapala.  The  country  is  mountainous,  being  traversed  by 
the  Cordilleras.  The  products  are  mahogany,  fruit,  cattle,  cot- 
ton, sugar,  tobacco,  coffee,  indigo,  sarsaparilla,  hides  and  skins, 
india-rubber,  cedar,  fustic,  rose  and  lima  wood.  Its  mineral 
wealth  is  great.  A  railway  57  miles  long  runs  from  Puerto 
Cortes  to  San  Pedro  Suia  and  La  Pimienta,  which  is  being 
joined  up  with  the  main  railway,  connecting  the  Atlantic  with 
the  Pacific.  All  importations  for  the  capital  are  done  by  the 
port  of  Amapala  on  the  Pacific  side.  Trade  principally  with 
the  United  States  of  America. 

MONEY — The  monetary  unit  is  the  gold  dollar  (100  centavos) 
=4s.=96  cents.  The  silver  dollar=ls.  7d.  (about)  =38  cents. 

For  weights  and  measures  the  metrical  system  has  been 
adopted. 

Law. 

Trade  mark  law  of  March  7th,  1902. 

17 


258  HONDURAS 

Term. 

The  duration  of  the  ownership  of  a  trade  mark  is  indefinite ; 
but  it  shall  be  considered  abandoned  by  the  closing  for  more 
than  a  year  of  the  establishment,  factory,  or  business  in  which 
it  may  have  been  employed,  or  the  failure  of  the  owner  to  pro- 
duce the  article  during  the  same  period.  (Art.  11.) 

Who  May  Apply. 

He  who  first  may  have  made  legal  use  of  a  mark,  is  the  only 
one  who  may  claim  to  acquire  its  ownership.  In  case  of  dis- 
pute between  two  proprietors  of  the  same  mark,  the  property 
shall  belong  to  the  first  possessor,  and  if  the  possession  can  not 
be  proven,  to  the  first  applicant.  (Art.  7.) 

Mode  of  Application. 

In  order  to  acquire  the  exclusive  property  to  a  trade  mark, 
the  interested  party  shall  present,  either  himself  or  by  means  of 
his  representative,  to  the  Secretary  of  Fomento,  a  statement 
showing  that  he  reserves  it  according  .to  his  right,  accompanied 
with  the  following  documents : 

1.  The  power  given  to  the  attorney,  if  the  interested  party 
does  not  personally  appear. 

2.  Two  copies  of  the  mark  or  of  its  representation  by  means 
of  a  drawing  or  an  engraving. 

3.  In  the  case  where  the  mark  is  put  in  low  or  high  relief 
upon  the  products,  or  where  it  presents  any  other  peculiarity, 
there  shall  also  be  remitted  two  separate  sheets  in  which  such 
peculiarities  shall  be  indicated,  either  by  means  of  one  or  vari- 
ous figures  or  by  means  of  an  explanatory  description. 

4.  The  written  commission  contract,  by  virtue  of -which  the 
agency  may  have  been  established,  duly  legalized,  in  the  case  re- 
ferred to  in  the  second  paragraph  of  the  preceding  article.     (Art. 

4.) 

The  application  shall  set  forth  the  name  of  the  factory,  the 
place  where  it  is  located,  the  domicile  of  the  proprietor,  and.  the 
kind  of  commerce  or  of  industry  for  which  the  applicant  desires 
the  use  of  the  mark.  (Art.  5.) 

The  industrial  or  mercantile  mark  that  belongs  to  a  foreigner 
not  resident  in  the  Republic  may  not  be  registered  in  this  coun- 
try if  it  shall  not  have  been  previously  and  regularly  registered 
in  the  country  of  its  origin.  (Art.  6.) 

Infringements. 

The  crime  of  counterfeiting  shall  be  committed : 

1.  When  trade  marks  are  used  that  are  exact  and  complete 
copies  of  another  the  ownership  of  which  is  already  secured. 

2.  When  the  imitation  is  such  as  to  produce  almost  complete 
identity,  the  difference  being  only  of  minor  character,  the  mark 


HONG  KONG  259 

may  be  susceptible  of  being  confounded  with  another  legally 
deposited.  (Art.  15.) 

There  shall  be  considered  as  guilty  of  the  crime  of  counter- 
feiting, whatever  may  be  the  place  where  it  may  have  been  com- 
mitted, those  who  may  have  counterfeited  a  mark,  or  made  use 
of  a  counterfeited  one,  whenever  it  is  applied  to  objects  of  the 
same  industrial  or  mercantile  nature.  (Art.  16.) 

Those  guilty  of  counterfeiting  trade  marks  are  subject  to  the 
penalties  established  in  the  Penal  and  Common  Code.  (Art.  17.) 

Requirements. 

Power  of  attorney  legalized  by  Consul  of  Honduras ;  two  cop- 
ies of  the  mark;  certified  copy  of  original  registered  mark. 
(Form  for  application  may  be  obtained  from  B.  Singer's  Offi- 
ces.) 

"  Assignments. 

Trade  marks  cannot  be  transmitted  except  with  the  establish- 
ment for  whose  objects  of  fabrications  or  of  commerce  they  serve 
as  distinction;  but  their  transmission  will  not  be  subject  to  any 
special  formality,  and  will  be  verified  conformably  to  the  rules 
of  common  law.  (Art.  10.) 

Laws  in  Force  to  Prevent  the  Sale  or  Importation  of  Goods 
Bearing  a  False  Indication  of  Origin. 

No  laws  are  in  force  to  prevent  the  sale  or  importation  of 
goods  bearing  a  false  indication  of  origin,  beyond  those  intended 
for  the  protection  of  articles  which  have  been  patented  or  the  trade 
marks  of  which  have  been  duly  registered ;  the  falsification  of  trade 
marks  and  the  offering  for  sale  of  goods  marked  with  a  false  trade 
name  or  trade  mark  are  punishable  offenses.-  Prosecutions  for  these 
offenses  are  rare,  but  there  would  be  no  difficulty  in  procuring  con- 
viction. Judicial  costs  are  generally  small  and  lawyers'  fees  are  not 
heavy.  No  steps  are  taken  to  prevent  the  importation  of  goods 
bearing  a  false  indication  of  origin.  There  are  no  requirements 
as  to  the  marking  of  imported  goods  to  show  the  country  or 
place  of  origin. 

Marking  Goods:    "Marca  Registrada." 


HONG  KONG 

The  area  of  this,  the  most  eastern  colony  of  Great  Britain,  is 
29  square  miles.  It  consists  of  the  island  of  Hong  Kong  and  of 
a  portion  of  the  mainland  opposite,  being  the  peninsula  of  Kow- 
loon,  to  a  line  joining  Mirs  Bay  and  Deep  Bay,  besides  the 


260  HONG  KONG 

waters  of  these  bays  and  the  island  of  Lantao.  It  is  40  miles 
from  Macao  and  90  from  Canton.  The  population  is  estimated 
at  about  450,000. 

MONEY — One  dollar  (100  cents)  —2s.  Id.  nominal  value=50 
cents  U.  S. 

WEIGHTS  AND  MEASURES — Same  as  Great  Britain. 

Law. 
Ordinance  No.  40  of  December  10th,  1909. 

Term. 

The  registration  of  a  trade  mark  shall  be  for  a  period  of  four- 
teen years,  but  may  be  renewed  from  time  to  time  in  accordance 
with  the  provisions  of  this  ordinance. 

What  May  Be  Registered. 

A  trade  mark  must  be  registered  in  respect  of  particular  goods 
or  classes  of  goods. 

A  registrable  trade  mark  must  contain  or  consist  of  at  least 
one  of  the  following  essential  particulars : 

1.  The  name  of  a  company,  individual,  or  firm  represented  in 
a  special  or  particular  manner. 

2.  The  signature  (in  other  than  Chinese  characters)   of  th<« 
applicant  for  registration  or  some  predecessor  in  his  business. 

3.  An  invented  word  or  invented  words. 

4.  A  word  or  words  having  no  direct  reference  to  the  char- 
acter or  quality  of  the  goods,  and  not  being  according  to  its 
ordinary  signification  a  geographical  name  or  a  surname. 

5.  Any  other  distinctive  mark ;  but  a  name,  signature,  or  word 
or  words,  other  than  such  as  fall  within  the  descriptions  in  the 
above    paragraphs    (1),    (2),    (3)    and    (4),    shall   not,   except 
by  order  of  the  Governor  or  the  court,  be  deemed  a  distinctive 
mark. 

Provided,  always,  that  anv  special  or  distinctive  word  or 
words,  letter,  numeral  or  combination  of  letters  or  numerals  used 
as  a  trade  mark  by  the  applicant  or  his  predecessors  in  business 
before  the  thirteenth  day  of  August,  one  thousand  eight  hun- 
dred and  seventy-five,  which  has  continued  to  be  used  (either 
in  its  original  form  or  with  additions  or  alterations  not  sub- 
stantially affecting  the  identity  of  the  same)  down  to  the  date 
of  the  application  for  registration,  shall  be  registrable  as  a  trade 
mark  under  this  ordinance,  if  it  is  already  registered  in  the 
United  Kingdom  as  an  old  mark  used  before  the  said  date. 


HONG  KONG  261 

'  For  the  purposes  of  this  section  "distinctive"  shall  mean  adapted 
to  distinguish  the  goods  of  the  proprietor  of  the  trade  mark  from 
those  of  other  persons. 

In  determining  whether  a  trade  mark  is  so  adapted,  the 
tribunal  may,  in  the  case  of  a  trade  mark  in  actual  use,  take 
into  consideration  the  extent  to  which  such  user  has  rendered 
such  trade  mark  in  fact  distinctive  for  the  goods  with  respect  to 
which  it  is  registered  or  proposed  to  be  registered. 

Mode  of  Application. 

(1)  Any  person  claiming  to  be  the  proprietor  of  a  trade  mark 
who  is  desirous  of  registering  the  same  must  apply  in  writing  to 
the  Registrar  in  the  prescribed  manner. 

(2)  In  the  case  of  an  application  for  registration  of  a  trade- 
mark under  Section  9(5)  which  does  not  fall  within  the  descrip- 
tions in  Section  9  (1),  (2),  (3)  or  (4)  the  Registrar  shall  refer 
the  application  to  the  Governor  or  to  the  court,  at  the  option  of 
the  applicant,  for  an  order  thereon. 

(3)  Subject  to  the  provisions  of  this  ordinance  the  Registrar 
may  refuse  an  application,  or  may  accept  it  absolutely  or  sub- 
ject to  conditions,  amendments,  or  modifications. 

(4)  In  case  of  any  such  refusal  or  conditional  acceptance 
the  Registrar  shall,  if  required  by  the  applicant,  state  in  writing 
and  communicate  to  the  applicant  the  grounds  of  his  decision 
and  the  materials  used  by  him  in  arriving  at  the  same,  and  such 
decision  shall  be  subject  to  appeal  to  the  Governor  or  the  court 
at  the  option  of  the  applicant.     The  tribunal  shall,  if  required, 
hear  the  applicant  and  the  Registrar,  and  shall  make  an  order 
determining  whether,  and  subject  to  what  conditions,   amend- 
ments, or  modifications,  if  any,  the  application  is  to  be  accepted. 

(5)  Appeals  under  this  section  shall  be  heard  on  the  materials 
so  stated  by  the  Registrar  to  have  been  used  by  him  in  arriving 
at  his  decision,  and  no  further  grounds  of  objection  to  the  ac- 
ceptance of  the  application  shall  be  allowed  to  be  taken  by  the 
Registrar,  other  than  those  stated  by  him,  except  by  leave  of  the 
tribunal  hearing  the  appeal.     Where  any  further  grounds  of  ob- 
jection are  taken  the  applicant  shall  be  entitled  to  withdraw  his 
apolication  without  payment  of  costs  on  giving  notice. 

(6)  The  Registrar  or  the  Governor  or  the  court,  as  the  case 
may  be,  may  at  any  time,  whether  before  or  after  acceptance 
correct  any  error  in  or  in  connection  with  the  application,  or 
may  permit  the  applicant  to  amend  his  application  upon  such 
terms  as  they  may  think  fit. 

When  an  application  for  registration  of  a  trade  mark  has  been 
accepted,  whether  absolutely  or  subject  to  conditions,  the  appli- 
cant shall,  as  soon  as  may  be  after  such  acceptance,  cause  the 
application,  as  accepted,  to  be  advertised  in  the  prescribed  man- 


262  HONG  KONG 

ner.     Such  advertisement  shall  set  forth  all  conditions  subject 
to  which  the  application  has  been  accepted. 

Opposition  to  Registration. 

(1)  Any  person  may,  within  the  prescribed  time  from  the 
date  of  the  advertisement  of  an  application  for  registration  of  a 
trade  mark,  give  notice  to  the  Registrar  of  opposition  to  such 
registration. 

(2)  Such  notice  shall  be  given  in  writing  in  the  prescribed 
manner  and  shall  include  a  statement  of  the  grounds  of  opposi- 
tion. 

(3)  The  Registrar  shall  send  a  copy  of  such  notice  to  the  ap- 
plicant and,  within  the  prescribed  time  after  the  receipt  of  such 
notice,  the  applicant  shall  send  to  the  Registrar,  in  the  prescribed 
manner,  a  counter  statement  of  the  grounds  on  which  he  relies 
for  his  application,  and  if  he  does  not  do  so  he  shall  be  deemed 
to  have  abandoned  his  application. 

(4)  If  the  applicant  send  such  counter  statement,  the  Regis- 
trar shall  furnish  a  copy  thereof  to  the  persons  giving  notice  of 
opposition,  and  shall,  after  hearing  the  parties,  if  so  required, 
and  considering  the  evidence,   decide  whether,   and   subject  to 
what  conditions,  registration  is  to  be  permitted. 

(5)  The  decision  of  the  Registrar  shall  be  subject  to  appeal 
to  the  court,  or,  with  the  consent  of  the  parties,  to  the  Governor. 

Assignments. 

A  trade  mark,  when  registered,  shall  be  assigned  and  trans- 
mitted only  in  connection  with  the  good  will  of  the  business 
concerned  in  the  goods  for  which  it  has  been  registered  and 
shall  be  determinable  with  that  good  will.  But  nothing  in  this 
section  contained  shall  be  deemed  to  affect  the  right  of  the 
proprietor  of  a  registered  trade  mark  to  assign  the  right  to  use 
the  same  in  any  British  possession  or  protectorate  or  foreign 
country  in  connection  with  any  goods  for  which  it  is  registered, 
together  with  the  good  will  of  the  business  therein  in  such  goods. 

Renewal  of  Registration. 

The  Registrar  shall,  on  application  made  by  the  registered  pro- 
prietor of  a  trade  mark  in  the  prescribed  manner  and  within 
the  prescribed  period,  renew  the  registration  of  such  trade  mark 
for  a  period  of  fourteen  years  from  the  expiration  of  the  original 
registration  or  of  the  last  renewal  of  registration,  as  the  case 
may  be,  which  date  is  herein  termed  "the  expiration  of  the  last 
registration." 

Penalty. 

(1)  Any  person  who  represents  a  trade  mark  as  registered  in 
Hong  Kong  which  is  not  so  shall  be  liable  for  every  offense 
on  summary  conviction  to  a  fine  not  exceeding  fifty  dollars. 


HONG  KONG  263 

(2)  A  person  shall  be  deemed,  for  the  purposes  of  this  ordi- 
nance, to  represent  that  a  trade  mark  is  registered  in  Hong 
Kong,  if  he  uses  in  connection  with  the  trade  mark  the  words 
"Registered  in  Hong  Kong,"  or  any  words  expressing  or  im- 
plying that  registration  has  been  obtained  in  Hong  Kong  for 
the  trade  mark. 

Requirments. 

Petition ;  declaration ;  power  of  attorney ;  and  six  copies  of  the 
mark. 

Status  of  Unreneived  Trade  Marks. 

Where  a  trade  mark  has  been  removed  from  the  register  for 
non-payment  of  the  fee  for  renewal,  such  trade  mark  shall,  never- 
theless, for  the  purpose  of  any  application  for  registration  during 
one  year  next  after  the  date  of  such  removal  be  deemed  to  be  a 
trade  mark  which  is  already  registered  unless  it  is  shown  to  the 
satisfaction  of  the  Registrar  that  there  has  been  no  bona  fide 
trade  user  of  such  trade  mark  during  the  two  years  immediately 
preceding  such  removal.  (Art.  31.) 

Non-User  of  Trade  Mark. 

A  registered  trade  mark  may,  on  the  application  to  the  court 
of  any  person  aggrieved,  be  taken  off  the  register  in  respect  of 
any  of  the  goods  for  which  it  is  registered,  on  the  ground  that  it 
was  registred  by  the  proprietor  or  a  predecessor  in  title  without 
any  bona  fide  intention  to  use  the  same  in  connection  with  such 
goods,  and  that  there  has  in  fact  been  no  bona  fide  user  of  the 
same  in  connection  therewith,  or  on  the  ground  that  there  has 
been  no  bona  fide  user  of  such  trade  mark  in  connection  with 
such  goods  during  the  five  years  immediately  preceding  the 
application,  unless  in  either  case  such  non-user  is  shown  to  be 
due  to  special  circumstances  in  the  trade,  and  not  to  any  in- 
tention not  to  use  or  to  abandon  such  trade  mark  in  respect  to 
such  goods.  (Art.  37.) 

Removal  of  Mark  on  Proof  of  Prior  Registration  in  Country  of 

Origin. 

The  court  may,  on  the  application  in  writing  made  within 
seven  years  from  the  registration  of  a  trade  mark  in  Hong  Kong 
by  any  person  aggrieved  by  such  registration,  remove  such  trade 
mark  from  the  register,  if  it  is  proved  to  the  satisfaction  of  the 
court,  that  such  trade  mark  is  identical  with,  or  so  nearly  re- 
sembles as  to  be  calculated  to  deceive,  any  trade  mark  which  was, 
prior  to  the  registration  in  Hong  Kong  of  the  first  mentioned 
trade  mark,  registered  (in  respect  of  goods  of  the  same  descrip- 
tion as  those  in  respect  of  which  the  first  mentioned  trade  mark 


264  HONG  KONG 

is  registered  in  Hong  Kong)  in  a  country  or  place  from  which 
goods  of  that  description  originate. 

Provided  always  that  no  trade  mark  shall  be  removed  from 
the  register  under  this  section  in  the  following  cases : 

(a)  If  the  proprietor  of  the  other  trade  mark  consented  to 
the   registration   in   Hong  Kong  of   the  first  mentioned   trade 
mark;  or 

(b)  If  the  proprietor  of  the  trade  mark  registered  in  Hong 
Kong  proves  that  he  or  his  predecessors  in  business  have  con- 
tinuously used  such  trade  marks  in  Hong  Kong  in  connection 
with  such  goods  as  aforesaid  from  a  date  anterior  to  the  date 
of  the  registration  of  the  other  trade  mark  in  the  country  or 
place  of  origin ;  or 

(c)  Unless  the  applicant  proves  either  that  within  the  five 
years  immediately  preceding  the  making  of  the  application  under 
this  section  there  has  been  bona  fide  user  in  connection  with  such 
goods  as  aforesaid  in  Hong  Kong  of  the  trade  mark  registered  in 
the  country  or  place  of  origin  or  that  the  special  circumstances 
of  the  trade  account  for  the  non-user  of  such  trade  mark  in  Hong 
Kong  within  the  same  period  or  that  the  trade  mark  so  registered 
in  the  country  or  place  of  origin  was  first  registered  there  within 
the  like  period  of  five  years,  and  in  either  event  gives  an  undertak- 
ing to  the  satisfaction  of  the  Registrar  that  he  will  within  three 
months  from  the  making  of  the  application  under  this  section  apply 
for  registration  in  Hong  Kong  of  the  trade  mark  so  registered  in 
the  country  or  place  of  origin,  and  will  take  all  necessary  steps  to 
complete  such  registration. 

All  applications  under  this  section  shall  be  heard  in  open  court 
in  Original  Jurisdiction.  (Art.  42.) 

Unregistered  Trade  Marks. 

No  person  shall  be  entitled  to  institute  any  proceedings  to 
recover  damages,  for  the  infringement  of  a  trade  mark  not 
registered  in  this  Colony.  (Art.  43.) 

User  of  Name,  Address  or  Description  of  Goods. 

No  registration  under  this  Ordinace  shall  interfere  with  any 
bona  fide  use  by  a  person  of  his  own  name  or  place  of  business, 
or  that  of  any  of  his  predecessors  in  business  or  the  use  by  any 
person  of  any  bona  fide  description  of  the  character  or  quality  of 
his  goods.  (Art.  45.) 

"Passing  Off"  Action. 

Nothing  in  this  Ordinance  contained  shall  be  deemed  to  affect 
the  rights  of  action  against  any  person  for  passing  off  goods  as 
those  of  another  person  or  the  remedies  in  respect  thereof.  (Art. 
46.) 


HONG  KONG  265 

Cost  of  Proceedings  Before  Court. 

In  all  proceedings  before  the  court  under  this  Ordinace  the 
costs  of  the  Registrar  shall  be  in  the  discretion  of  the  court,  but 
the  Registrar  shall  not  be  ordered  to  pay  the  costs  of  any  other 
of  the  parties.  (Art.  49.) 

Mode  of  Giving  Evidence. 

In  any  proceeding  under  this  Ordinance  before  the  Registrar 
or  the  Governer,  the  evidence  shall  be  given  by  statutory 
declaration  in  the  absence  of  directions  to  the  contrary,  but,  in 
any  case  in  which  he  shall  think  it  right  so  to  do,  the  Registrar 
or  the  Governor  may  (with  the  consent  of  the  parties)  take  evi- 
dence viva  voce  in  lieu  of  or  in  addition  to  evidence  by  declara- 
tion. Any  such  statutory  declaration  may  in  the  case  of  appeal 
be  used  before  the  court  in  lieu  of  evidence  by  affidavit,  but  if 
so  used  shall  have  all  the  incidents  and  consequences  of  evidence 
by  affidavit. 

In  case  any  part  of  the  evidence  is  taken  viva  voce  the  Regis- 
trar or  the  Governor  shall,  in  respect  of  requiring  the  attendance 
of  witnesses  and  taking  evidence  on  oath  be  in  the  same  position 
in  all  respects  as  a  Special  Referee  of  the  Supreme  Court.  (Art. 
50.) 

POWERS  AND  DUTIES  OF  REGISTRAR  OF  TRADE  MARKS. 
Exercise  of  Discretionary  Pozver  by  Registrar. 

Where  any  discretionary  or  other  power  is  given  to  the  Regis- 
trar by  this  Ordinance  or  rules  made  thereunder,  he  shall  not 
exercise  that  power  adversely  to  the  applicant  for  registration  or 
the  registered  proprietor  of  the  trade  marks  in  question  without 
(if  duly  required  to  do  so  within  the  prescribed  time)  giving 
such  applicant  or  registered  proprietor  an  opportunity  of  being 
heard.  (Art.  53.) 

Appeal  from  Registrar. 

Except  where  expressly  given  by  the  provisions  of  this  Ordi- 
nance or  rules  made  thereunder  there  shall  be  no  appeal  from  a 
decision  of  the  Registrar  otherwise  than  to  the  Governor,  but 
the  court,  in  dealing  with  any  question  of  the  rectification  of  the 
register  shall  have  power  to  review  any  decision  of  the  Registrar 
relating  to  the  entry  in  question  or  the  correction  sought  to  be 
made.  (Art.  54.) 

ROYAL  ARMS. 

Unauthorised  Assumption  of  Royal  Arms. 

If  any  person,  without  the  authority  of  His  Majesty,  uses  in 
connection  with  any  trade,  business,  calling,  or  profession,  the 
Royal  Arms  (or  arms  so  closely  resembling  the  same  as  to  be 


266  HUNGARY 

calculated  to  deceive)  in  such  manner  as  to  be  calculated  to  lead 
to  the  belief  that  he  is  duly  authorized  so  to  use  the  Royal  Arms, 
or  if  any  person  without  the  authority  of  His  Majesty  or  of  a 
member  of  the  Royal  Family,  uses  in  connection  with  any  trade, 
business,  calling,  or  profession  any  device,  emblem,  or  title  in 
such  manner  as  to  be  calculated  to  lead  to  the  belief  that  he  is 
employed  by  or  supplies  goods  to  His  Majesty  or  such  members 
of  the  Royal  Family,  he  may,  at  the  suit  of  any  person  who  is 
authorized  to  use  such  arms  or  such  device,  emblem  or  title,  or 
is  authorized  by  the  Governor  to  take  proceedings  in  that 
behalf,  be  restrained  by  injunction  or  interdict  from  continuing 
so  to  use  the  same:  Provided  that  nothing  in  this  section  shall 
be  construed  as  affecting  the  right,  if  any,  of  the  proprietors  of 
a  trade  mark  containing  any  such  arms,  device,  emblem,  or  title 
to  continue  to  use  such  trade  mark.  (Art.  61.) 
Marking  Goods:  "Trade  Mark  Registered." 


HUNGARY 

The  kingdom  of  Hungary,  the  eastern  of  the  two  independent 
sections  of  Austria-Hungary,  consists  if  Hungary  proper,  Transyl- 
vania (now  completely  incorporated  with  Hungary),  Croatia- 
Slavonia  and  the  territory  of  Fiume. 

Agriculture  forms  the  staple  industry  of  the  people,  the  prin- 
cipal crops  being  wheat,  maize,  oats,  barley  and  rye.  The  coun- 
try possesses  great  mineral  wealth,  iron,  lignite,  gold,  coal,  silver, 
and  copper  being  mined.  The  principal  industrial  products  are 
iron  and  steel  machinery,  earthenware,  glass,  flour,  wines,  chemi- 
cals and  tobacco.  The  chief  commercial  centers  are  Budapest, 
Arad,  Debreczen,  Kassa,  Raab,  Temesvar,  Klausenburg,  Kron- 
stadt,  Hermannstadt  and  Eszek.  The  principal  exports  are  flour, 
cereals,  wine  and  wool,  and  the  imports  textiles,  woolen  goods, 
cotton  yarn  and  raw  tobacco.  The  area  of  Hungary,  incliuding 
Croatia- Slavonia,  is  324,851  square  kilometres,  or  125,430  English 
square  miles,  and  the  population  20,315,174. 

MONEY,  WEIGHTS  AND  MEASURES — Same  as  in  Austria. 

TRADE  MARKS 

By  virtue  of  the  provisions  of  a  new  treaty  of  commerce 
entered  into  between  Austria  and  Hungary  in  October,  1907, 
new  regulations  regarding  the  registration  of  trade  marks  in  these 
countries  have  gone  into  effect.  Hitherto  it  has  been  necessary 
for  foreign  owners  of  trade  marks  to  register  in  both  countries 
at  the  same  time,  registration  in  a  single  country  of  a  foreign 
mark  not  having  been  permitted.  Hereafter,  however,  foreign 
subjects  mav  register  their  trade  marks  either  in  Austria  or  in 
Hungary.  This  is  the  principal  feature  of  novelty  in  the  regula- 
tions. 


HUNGARY  267 

The  above  regulations  will  enable  owners  of  trade  marks  to 
secure  separate  and  independent  registration  in  Austria  and  Hun- 
gary instead  of  requiring,  as  in  the  past,  that  the  mark  must  be 
registered  in  Austria  and  Hungary  in  order  that  the  registration 
shall  be  effective  in  either.  Registration  in  Hungary  gives  pro- 
tection in  Hungary,  Bosnia  and  Herzegovina.  Registration 
in  Austria  gives  protection  in  Austria. 

Hungary  being  independent  of  Austria  in  regard  to  the  regis- 
tration of  marks,  is  about  to  enact  a  new  law  on  the  subject.  At 
the  present  the  same  laws  and  regulations  are  in  force  as  in  Aus- 
tria. 

Law  of  December  31,  1907,  Effective  January  i,  1908,  Between 
Austria  and  Hungary. 

Commercial  and  trade  marks,  as  also  names,  signs,  coats  of 
arms,  and  titles  of  establishments,  which  are  used  in  commerce 
and  trade  shall  enjoy  full  legal  protection  in  both  States. 

The  subjects  of  one  of  the  States,  as  also  persons  who  have 
their  residence  or  their  industrial  establishment  in  the  territory 
of  that  State  shall,  in  regard  to  the  protection  of  their  commer- 
cial and  trade  marks,  names,  signs,  coats  of  arms  and  the  business 
titles  of  their  establishments,  and  in  regard  to  the  protection  of 
unfair  competition,  enjoy  in  the  territory  of  the  other  State  the 
same  rights  in  every  respect  as  its  own  subjects. 

For  domestic  marks,  legal  protection  for  the  territory  of  the 
other  State  also  is  acquired  by  the  registration  effected  with  the 
proper  registration  authorities  of  one  of  the  two  States  without 
the  necessity  of  the  appointment  of  an  attorney  to  the  territory 
of  the  latter. 

The  following  suits  can,  however,  be  brought  not  only  before 
the  proper  authorities  of  the  home  State,  but  also  before  those 
of  the  other  Slate  with  the  legal  effect  of  the  judgment,  however, 
for  its  own  territory  only. 

(a)  Suits  for  the  nullification  of  a  mark  on  account  of  the 
similarity  with  an  older  mark  legally  existing. 

(b)  Suits  on  account  of  prior  use. 

(c)  Suits  on  the  ground  of  the  right  to  a  name,  coat  of  arms 
sign  or  title  of  an  establishment. 

(d)  Suits  of  establishment,  that  is  suits  for  the  establishment 
of  the  exclusive  right  to  the  use  of  a  mark  without  respect  to  the 
existence  of  a  mark  older  by  priority. 

(e}  Suits  for  the  nullification  of  a  mark  on  account  of  being 
a  mark  of  common  property,  this,  however,  only  within  a  term  of 
three  years,  reckoned  from  the  registration,  after  the  expiry  of 
which  this  action  can  only  take  place  before  the  proper  authori- 
ties of  the  home  State. 


268  HUNGARY 

The  provisions  for  suits  under  (a)  to  (d)  in  the  preceding 
paragraph  holds  good  also  for  suits  to  declare  the  invalidity  or 
nullification  of  the  .rights  to  designs  or  models,  as  well  also  for 
possible  suits  for  the  establishment  of  the  rights  to  designs.  How- 
ever, the  right  to  a  design  shall  not  be  declared  null  if  products 
manufactured  according  to  the  design  are  introduced  from  the 
territory  of  one  of  the  States  into  that  of  the  other  or  the  design 
was  used  only  in  one  of  the  States. 

Both  Ministers  of  Commerce,  or  the  central  authorities  acting, 
perhaps,  in  their  place  in  the  future,  shall  monthly  communicate 
to  each  other  the  registrations  effected  in  the  respective  country, 
for  entry  in  the  register  kept  for  that  purpose,  and  for  the  pur- 
pose of  enforcement  and  publication. 

It  shall  be  permitted  to  the  administration  of  the  central  author- 
ity in  charge  of  the  protection  of  marks  of  each  State  to  declare 
that  one  of  the  marks  transmitted  to  it  in  the  sense  of  Articles 
3  and  4  by  the  authorities  of  the  other  State  cannot  be  protected 
in  its  State. 

Such  a  denial  of  protection  can  only  take  place  on  grounds 
which  could  be  legally  made  to  apply  to  a  domestic  mark.  How- 
ever, neither  of  the  two  States  will  deny  protection  to  a  mark 
registered  in  the  other  State  solely  for  the  reason  that  it  does 
not  satisfy  the  requirements  in  force  in  its  territory  in  regard  to 
the  composition  and  outward  appearance  of  marks,  as  long  as, 
in  this  respect,  it  satisfies  the  legal  provision  of  the  other  State. 

Public  coats  of  arms  of  the  territory  of  one  part  shall  not  be 
considered  as  free  marks  in  the  territory  of  the  other  part. 
Marks  which  contain  such  coats  of  arms  can  only  be  registered 
in  favor  of  that  person  who  has  the  right  to  the  use  of  such  coat 
of  arms.  This  applies  to  the  representation  of  coats  of  arms 
which  exhibit  variations  from  the  official  form,  so  far  as,  in  spite 
of  these  variations,  confusion  in  trade  is  to  be  expected.  These 
provisions  find  special  application  also  to  the  coats  of  arms  of  the 
Austrian  hereditary  lands  and  to  the  sacred  Hungarian  Crown. 

The  employment  in  a  mark  of  the  language  used  in  one  of  the 
two  States  will  not,  even  when  the  goods  are  not  furnished  with 
the  declaration  of  the  place  of  origin,  be  considered  as  mislead- 
ing in  respect  to  the  real  origin  of  the  goods,  and  protection  on 
this  ground  alone  will  not  be  denied  to  a  mark. 

On  the  other  hand,  each  of  the  two  States  is  entitled  to  exclude 
from  registration  trade  marks  which  in  their  general  impression, 
by  the  employment  of  the  national  colors  in  their  heraldic  order 
and  arrangement,  or  by  the  employment  of  representation  of 
National  emblems,  monuments  and  architectural  works  of  the 
State,  of  names  or  likenesses  of  historical  persons  of  the  State, 
or  persons  renowned  in  the  field  of  political  life,  art  or  science, 
serve  outside  of  the  State,  for  the  consumer,  as  a  manifest  indica- 
tion of  the  origin  of  the  goods,  except  when  the  true  origin  (place 


HUNGARY  269 

or  country)  of  the  goods  is  given,  or  to  be  deduced,  with  equal 
distinctness,  or  at  least  the  fact  appears  that  they  do  not  originate 
in  this  State. 

The  employment  of  the  national  colors  in  the  composition  of 
inscriptions,  arabesques  and  the  like,  as  well  as  for  marginal  lines 
as  part  of  a  mark  will  not  be  looked  upon  in  itself  as  an  indica- 
tion of  the  origin  of  the  goods. 

Trade  in  an  article  which  is  provided  with  a  registered  mark 
admitted  to  protection  according  to  the  preceding  provisions,  as 
well  as  the  employment  of  this  mark  in  business  notices,  will  not, 
in  either  of  the  two  States,  be  prevented  on  the  ground  that  it  is 
misleading  in  regard  to  the  origin  of  the  article. 

In  deciding  the  question  whether  the  get-up  or  designation  of 
an  article,  in  case  it  is  not  registered  as  a  mark,  or  certain  addi- 
tions annexed  to  a  registered  mark,  are  apt  to  cause  confusion  in 
regard  to  the  origin  of  the  article,  the  provisions  contained  in  the 
preceding  articles  are  to  be  applied. 

Use  of  the  authority  to  refuse  protection  to  a  mark  must  be 
made  at  the  latest  within  one  year  from  the  arrival  of  the  mark 
sent  by  the  authorities  of  the  other  State,  and  that  authority  shall 
be  notified  thereof.  The  grounds  for  the  denial  of  protection  must 
be  given  therewith. 

The  competent  authorities  of  the  State  of  origin  shall  notify 
the  applicant  forthwith  of  this  denial  of  protection.  Against  the 
denial  of  protection  the  applicant  is  entitled  to  the  same  legal 
remedies  as  if  the  mark  had  been  directly  deposited  by  him  in  the 
State  in  which  protection  is  denied  it. 

The  terms  for  these  legal  remedies  will  begin  to  run  from  the 
delivery  of  the  notification  of  the  denial  of  protection  by  the 
authorities  of  the  other  State. 

In  regard  to  the  protection  of  marks  of  foreign  enterprises 
and  of  designs  or  models  of  such  persons  as  have  not  their  resi- 
dence or  their  establishment  in  the  territory  of  either  of  the 
States,  treaties  concluded  with  the  respective  States  are  to  have 
effect. 

It  is  also  allowed  to  these  enterprises  and  persons  to  deposit 
their  marks,  for  one  only  of  the  two  States,  at  the  proper  place 
of  registration  in  Vienna  or  Budapest. 

The  priority  of  a  mark  acquired  by  registration  effected  in  one 
of  the  two  States,  prior  to  the  entry  in  force  of  this  treaty,  will 
remain  undisturbed  thereby. 

Marking  Goods:     "Vedjegy." 

DECISIONS. 
Registrable  Trade  Marks. 

Under  the  law  of  Hungary,  as  in  the  case  of  most  countries, 
marks  consisting  of  geographical  or  descriptive  terms  are  not 
registrable.  By  a  recent  decision,  the  word  mark  "After  Dinner 


270  HUNGARY 

Delicacy"  in  its  German  equivalent  was  held  not  registrable  for 
biscuits  and  like  products,  because  it  had  no  distinctive  force. 
The  word  "Vacuum"  as  a  mark  for  filler  is  not  registrable  for 
the  same  reason.  The  word  "Helgoland"  being  a  geographical 
term,  likewise  fails  to  satisfy  the  requirements  of  the  statute. 
(Szabadalmi  Szemle,  1911,  pp.  69,  83.) 


The  Minister  of  Commerce  of  Hungary  has  held  the  word 
"Force"  as  applied  to  a  food-stuff,  obtained  from  different  sorts 
of  grain,  to  be  descriptive  of  the  quality  of  the  product  and  has 
accordingly  refused  it  registration  as  a  trade  mark.  (Trans,  of 
the  Int.  Assn.  for  Pro.  of  Ind.  Prop.,  1904,  pp.  268-283.) 


The  word  "Agraria"  for  scythes  is  not  registrable,  because 
descriptive  of  the  goods.  "Agrarius"  is  an  adjective  whose 
feminine  form  "Agraria"  literally  means  "rural,"  and  which  is 
familiar  in  its  meaning  among  the  consuming  public  far  and 
wide.  It  is  also  well  known  in  daily  life,  in  which  it  is  used  as 
a  symbol  of  occupations  relating  to  farming,  in  the  Hungarian 
language,  "Agrar,"  in  the  German  ''Agrarisch."  Therefore,  the 
word  "Agraria"  does  not  come  within  the  meaning  of  the  trade 
mark  act,  because  it  expresses  the  nature  of  the  goods,  inas- 
much as  the  tools  to  which  it  is  applied  are  for  agricultural 
purposes.  (Austrian  Patent  Blatt,  1911,  p.  692.) 

The  unwillingness  of  the  Minister  of  Commerce,  in  view  of 
the  provision  of  the  law  excluding  terms  of  a  dec^  live  charac- 
ter, to  permit  the  registration  of  any  mark  embodying  a  false 
suggestion  that  the  goods  so  marked  are  of  Hungarian  origin,  is 
indicated  in  several  late  decisions. 

He  holds  that  the  Hungarian  word  "Csikos,"  commonly  trans- 
lated herdsman,  is  not  registrable  for  goods  of  foreign  origin.  It 
is  a  well  known  fact,  he"  says,  that  the  raising  of  stock  and  par- 
ticularly horses  has  played  a  very  important  part  in  the  industrial 
development  of  Hungary,  and  that  the  word  has,  in  the  Hungarian 
speech,  a  meaning  incapable  of  translation  into  a  foreign  lan- 
guage, because  of  the  absence  of  any  exact  equivalent  in  any 
other  tongue.  So  closely  is  this  picturesque  character  interwoven 
with  the  life  of  the  Hungarian  nation,  and  so  prominently  is  he 
identified  with  Hungarian  poetry  and  art,  that  he  is  regarded 
not  only  at  home  but  abroad,  as  a  sort  of  national  symbol.  Hence 
the  use  of  the  word  upon  other  than  Hungarian  goods  would 
mislead  the  prospective  purchaser  as  to  their  origin.  (Austrian 
Patent  Blatt,  1911,  p.  161.) 

The  words  "Honved,"  homeguard,  and  "Huszar,"  or  hussar, 
are  for  the  like  reasons  held  to  be  deceptive  and  not  registrable 
for  goods  that  are  not  of  Hungarian  origin.  In  the  case  of  a 
German  trade  mark,  not  particularly  described,  it  is  said  to  have 
been  rejected  for  the  reason  that  certain  Hungarian  inscriptions 


HUNGARY  271 

thereon  were  calculated  to  mislead  the  purchasing  public  as  to  the 
origin  of  the  goods.  The  effect  of  these  decisions  appears  to  be 
that  no  word  in  the  Hungarian  language  will  be  admitted  to 
registration  under  the  Hungarian  law,  for  goods  not  of  native 
production. 

The  word  "Ideal"  can  not  be  registered  because  it  indicates 
merely  the  quality  of  the  goods. 

The  word  "Standard"  is  unregistrable  for  the  same  reason. 
(Szabadalmi  Szemle,  1911,  pp.  101,  123.) 


The  words  "Liquor  Hypno  Bromid"  are  held  not  to  be  prop- 
erly registered  as  a  trade  mark.  The  first  and  last  of  these 
words  indicate  merely  the  nature  and  the  content  of  the  goods 
and  are  for  that  reason  purely  descriptive.  The  word  "Hypno," 
although  a  word  of  Greek  origin,  must  be  considered  as  suffi- 
ciently familiar  to  the  general  public  as  to  convey  the  signifi- 
cance of  its  Greek  original,  "sleep."  Hence,  the  public  would 
assume  that  the  word  refers  to  the  properties  of  the  liquor,  in 
that  it  induces  sleep. 

The  question  of  conflict  between  two  marks  has  been  handled 
in  another  decision  -with  a  very  enlightened  appreciation  of  the 
essential  point  in  controversy.  The  registrant  of  a  trade  mark 
for  tea  sought  the  cancellation  of  a  later  registered  mark,  be- 
cause in  conflict  with  his  own.  The  later  registrant  claimed 
many  distinctive  elements  in  his  mark  such  that  confusion  be- 
tween them  was  impossible.  The  earlier  mark  displayed  several 
stars  and  the  figure  of  a  Chinese,  with  Hungarian  and  Russian 
inscriptions.  The  defendant's  mark  showed  the  single  star  placed 
between  the  letters  G.  S.  These  were  the  essential  features  of 
the  two  marks.  It  was  held  that  the  star  is  the  characteristic 
element  of  the  two  marks,  the  part  which  affixes  itself  in  the 
memory  of  the  purchaser,  to  the  exclusion  of  others.  The  figure 
of  a  Chinese  in  the  earlier  registration  is  not  distinctive,  because 
customarily  used  on  tea.  The  same  is  true  of  the  inscription 
in  the  Hungarian  and  Russian  language  and  of  the  other  decora- 
tions. Therefore,  purchasers  and  consumers  of  the  plaintiff's 
tea  would  know  it  under  the  designation,  'star  tea,"  and  the 
defendant's  trade  mark,  composed  essentially  of  a  star,  must  be 
found  to  resemble  the  plaintiff's  so  much  as  to  be  likely  to  be 
confused  therewith.  The  possibility  of  such  confusion  is  in- 
creased by  the  fact  that,  the  plaintiff's  firm  name  being  "Ger- 
briider  Stein,"  the  letters  G.  S.  shown  on  the  defendant's  trade 
mark  further  leads  the  purchaser  to  the  belief  that  the  mark 
designates  the  goods  handled  by  the  plaintiff. 

It  was  further  held  that  the  defendant,  not  having  actually 
put  upon  the  market  any  tea,  his  mark  was  not  entitled  to  pro- 
tection. Legal  protection  can  be  granted  only  for  such  goods  as 


272  HUNGARY 

are  actually  placed  upon  the  market  by  the  claimant  to  the  mark, 
since  only  in  respect  of  these  goods  is  any  distinguishing  mark 
reasonably  necessary  or  proper. 

Trade  marks  consisting  of  the  representation  of  a  swan,  joined 
with  various  words  such  as  "Express,"  "Favorit,"  etc.  and  the 
numerals  1829,  are  held  not  to  infringe  upon  the  exclusive  right 
to  the  use  of  a  trade  mark  that  consists  merely  of  the  representa- 
tion of  a  swan  swimming  in  the  water.  (Szabadalmi  Szemle, 
1911,  p.  170.) 

The  protection  given  to  a  trade  mark  extends  not  alone  to  the 
particular  goods  for  which  the  trade  mark  has  been  registered, 
but  for  goods  of  the  general  class  to  which  these  articles  belong. 
Cream,  laundry  and  toilet  soap,  washing  powder  and  cleansing 
compound  belong  to  the  same  class  of  goods  as  preparations  for 
the  hands.  Therefore,  one  who  has  registered  a  trade  mark  for 
the  latter  description  of  articles  may  require  that  another  later 
application  for  a  similar  trade  mark  is  limited  to  other  classes  of 
goods.  (Szabadalmi  Szemle,  1911,  p.  136.) 


The  principle  governing  the  acts  of  the  Hungarian  Patent 
Office,  that  no  mark  can  be  registered  for  goods  not  of  Hungar- 
ian origin,  the  effect  of  which  would  be  to  convey  the  impression 
that  the  goods  so  marked  were  manufactured  in  Hungary,  is  il- 
lustrated by  a  decision  of  the  Hungarian  Minister  of  Commerce 
under  date  of  March  20,  1911.  The  application  was  for  the 
registration  by  an  Austrian  firm  of  the  name  "Franz  Deak," 
which,  the  Minister  says,  is  the  name  of  an  eminent  statesman, 
prominent  in  the  recent  history  of  Hungary.  This  name,  applied 
to  goods,  would  cause  the  consuming  public  to  believe  that  the 
goods  were  of  Hungarian  origin,  although,  as  a  matter  of  fact, 
they  were  manufactured  in  Austria.  Therefore,  the  mark  would 
deceive  the  public  as  to  the  origin  of  the  goods,  within  the  mean- 
ing of  the  trade  mark  law. 

The  fact  that  the  applicant  had  a  consent  to  the  use  of  the 
name  does  not  make  the  name  the  more  registrable,  because  it 
does  not  in  any  way  alter  its  deceptive  character.  (Austrian 
Patent-Blatt,  1911,  p.  984.) 

The  International  Convention. 

Article  VI  of  the  International  Convention  for  the  Protection 
of  Industrial  Property  has  been  the  subject  of  construction  by 
the  Hungarian  Minister  of  Commerce,  to  determine  how  far  the 
convention  requires  the  registration  in  Hungary  of  a  mark,  al- 
ready registered  and  protected  in  the  country  of  its  origin. 

Application  was  made  by  a  German  firm  for  the  registration 
of  a  trade  mark  consisting  of  the  name  "Andrassy."  The  ap- 
plication was  refused  upon  the  ground  that  while  the  name,  as 
used,  was  not  accompanied  by  any  statement  of  the  real  place 


HUNGARY  273 

of  production,  the  name  itself  indicated  a  Hungarian  origin. 
An  appeal  was  taken  to  the  Minister  of  Commerce.  At  the  same 
time  the  applicant  presented  the  consent  of  the  Count  Andrassy 
to  the  use  of  his  name  as  a  mark. 

The  Minister  said  that  the  consent  to  the  use  of  the  name  was 
immaterial,  for  the  question  was  whether  or  not  the  name  was 
tantamount- to  a  false  indication  of  origin  and  would,  therefore, 
deceive  the  public  as  to  the  source  of  the  article.  The  name  is 
-that  of  a  family  which  has  played  so  important  a  part  in  the 
contemporary  history  of  the  country  that  the  application  thereof 
to  any  foreign  product  would  be  likely  to  cause  deception.  The 
consent  of  one  of  that  name  would  in  no  way  prevent  such  de- 
ception. The  right  to  use  the  names  of  persons  prominent  in 
public  life  can  not  be  bestowed  by  the  persons  themselves,  when 
the  use  will  tend  to  the  deception  of  the  public.  The  Minister 
likens  such  names  to  the  arms  or  public  insignia  of  the  state, 
its  public  buildings  or  monuments. 

The  applicant  maintained  that  the  mark  having  already  been 
registered  in  Germany,  the  Hungarian  office  was  bound  to  ac- 
cept the  application.  The  Minister  holds  that  the  convention  has 
no  application  to  questions  involving  the  intrinsic  validity  of  the 
mark  as  a  trade  mark,  which  question  is  always  subject  to  the 
local  law.  The  decision  rejecting  the  application  was  affirmed. 
(Austrian  Patent-Blatt,  1910,  p.  107.) 

Trade  Mark  Infringement. 

The  Criminal  Court  of  Budapest  has  held  that  infringement 
of  a  trade  mark  is  proven  where  it  is  shown  that  the  defendant 
has  sold  or  offered  for  sale  goods  to  which  he  has  applied  the 
Magyar  translation  of  a  name,  which,  to  his  knowledge,  is  regis- 
tered as  a  trade  mark  in  the  name  of  a  third  person,  to  indicate 
goods  of  a  like  character.  (Trans,  of  the  Int.  Assn.  for  the  Pro- 
tection of  Ind.  Prop.,  1907,  p.  127.) 

A  decision  of  the  court  of  appeals  of  Debreczen,  relative  to  a 
case  of  trade  mark  infringement,  illustrates  the  principles  ap- 
plicable to  cases  of  that  character  in  Hungary.  The  complainant 
was  the  manufacturer  of  embroidery  thread  marked  with  a  label 
bearing  the  letters  "D.  M.  C."  and  the  name  of  the  firm  "Dollfus 
Mieg  &  Co."  The  defendants  made  use  of  the  label  upon  the 
like  goods,  which  was  practically  a  reproduction  in  appearance 
of  the  original  label,  bearing  the  letters  "D.  M.  C."  and  the  as- 
sumed firm  name  "Debreceni  Mechanikai  Czernagyar."  They 
defended  upon  the  ground  that  letters  were  not  properly  the 
subject  of  registration  as  trade  marks  under  the  Hungarian  law, 
and  that  therefore  they  could  not  be  punished  for  infringement 
upon  the  mark.  To  this  defense,  however,  the  court  said  that 
the  mark  was  registered  and  that  its  validity  was  not  to  be  in- 

18 


274  ICELAND 

quired  into  in  that  proceeding.     So  long  as  it  continued  to  be 
upon  the  register,  it  must  be  protected  according  to  the  law. 

The  intent  of  the  parties  to  infringe  was  clearly  shown,  from 
the  facts  that  they  had  in  all  essential  particulars  of  appearance 
reproduced  the  complainant's  label,  so  that  the  ordinary  pur- 
chaser could  not  distinguish  the  two  products,  the  one  from  the 
other;  that  they  had  assumed  a  firm  name  which  they  had  no 
right  to  use  and  which  represented  no  existing  firm  and  had 
adopted  it  with  a  view  to  appropriating  the  same  initials  in  use 
by  the  complainant.  It  was  held  that  the  offense  of  the  infringe- 
ment was  made  out  and  the  defendants  were  accordingly  con- 
demned to  the  payment  of  a  fine  of  one  hundred  crowns  with 
damages  and  costs.  (Dollfus,  Mieg  &  Co.  vs.  Isidore  Beck, 
Revue  Int.  de  la  Prop.  Ind.,  1911,  p.  88.) 


ICELAND 

Iceland  lies  near  the  Arctic  Circle  and  is  nearer  to  Greenland 
than  to  Europe.  It  has  an  area  of  about  39,000  square  miles,  or 
nearly  half  the  size  of  Great  Britain,  and  has  a  population  of 
about  85,000. 

In  Iceland  there  are  few  manufactories.  Some  carding  and 
spinning  manufactories  and  several  cigar  manufactories  have 
been  established  during  the  last  few  years,  it  being  found  most 
profitable  to  export  all  products  in  the  raw  state,  but  knitted 
woolen  articles  are  exported  to  some  small  extent.  The  bulk  of 
the  population  live  by  rearing  sheep  and  cattle,  and  some  butter 
is  exported  to  Great  Britain,  many  dairies  having  been  estab- 
lished in  Iceland  during  late  years.  Mutton,  beef  and  fish  are 
also  exported.  Milk  in  various  forms  is  the  staple  food  of  the 
inland  districts. 

The  most  important  industry  is  the  fishing,  which  includes  the 
salting  of  cod,  herrings,  etc.,  and  also  the  production  of  fish  oil. 

The  imports  embrace  almost  every  article  of  consumption  and 
articles  in  general  use. 

MONEY — The  monetary  unit  in  Iceland  is  the  krone=100  ore 
=27  cents  (about). 

WEIGHT — Pund=1.102  Ibs.  avoirdupois. 

MEASURES— Pot  (Liter:  0.966)=0.2126  gallon. 

Law. 

November  13,  1903.     Regulation,  December  30,  1904. 

The  Trade  Mark  Law  of  November  13,  1903,  is  substantially 
a  re-enactment  of  the  Danish  Trade  Mark  Law. 

A  number  of  ordinances  secures  protection  of  foreign  trade 
marks  under  this  new  law.  Iceland  has  lately  entered  into  reci- 


INDIA 


275 


procal  treaties  with  several  countries,  such  as  Great  Britain  and 
several  British  colonies. 

Term. 
Ten  years;  renewable.     It  expires  with  the  home  registration. 

Requirements. 

Power  of  attorney ;  copy  of  the  registered  Danish  trade  mark ; 
three  facsimiles  of  the  mark  and  one  electrotype.  (Form  for 
application  may  be  obtained  from  B.  Singer's  Offices.) 


INDIA 

The  territory  of  British  India,  formerly  administered  by  the 
Honorable  East  India  Company,  came  directly  under  the  au- 
thority of  the  Crown  in  1858,  and  in  1877  Her  Majesty,  Queen 
Victoria,  assumed  the  title  of  Empress  of  India,  being  succeeded 
in  January,  1901,  by  H.  I.  M.  King  Edward  VII  of  Great  Britain 
and  Ireland,  and  Emperor  of  India,  who,  in  turn,  was  succeeded 
by  George  V. 

The  area  under  British  administration,  including  Burmah,  is 
1,097,900  square  miles,  with  a  population  in  1911  of  about  315,- 
000,000.  To  this  has  to  be  added  an  area  of  690,270  square  miles 
belonging  to  the  feudatory  States,  with  a  population  of  about 
70,000,000. 

MONEY — 1  rupee  (16  annas)  =1  s.  4d.=56  cents  U.  S. ;  1 
anna  (12  pies)=ld.=2  cents  U.  S. 

WEIGHTS  AND  MEASURES — Same  as  Great  Britain.  The 
maund  (82  2/7  Ib.  avoirdupois)  is  also  used. 

Law. 

Although  no  provision  is  made  by  statute  for  the  registration 
of  trade  marks,  it  is  the  practice  to  register  a  declaration  of 
ownership  under  the  I'ndian  Registration  Act  XVI  of  1908. 
This,  however,  has  no  legal  effect.  The  only  effect  is  that  it 
affords  some  evidence  of  proprietorship  and  user. 

The  law  as  to  trade  marks  in  India  is  the  same  as  obtained  in 
England  prior  to  the  passing  of  the  Trade  Marks  Acts.  The 
validity  of  a  trade  mark  depends  upon  its  long  use  in  the  coun- 
try and  it  thereby  acquires  the  protection  afforded  by  the  com- 
mon law. 

Duration. 

Unlimited. 

Requirements  and  Mode  of  Application. 

Power  of  attorney;  declaration  of  ownership;  four  facsimiles 
of  the  trade  mark;  electro  or  wood  block,  if  advertisement  is 
desired. 


276  INDIA 

In  addition  to  the  registration  of  a  declaration  as  above,  it 
is  usual  and  advisable,  but  not  required  by  the  provisions  of  the 
Indian  Registration  Act,  to  advertise  proprietorship  and  user  of 
the  trade  mark  in  the  Calcutta  Exchange  Gazette  or  other  paper. 

Particular  attention  is  directed  to  the  necessity  of  both  the 
power  and  the  declaration  being  made  by  one  and  the  same  indi- 
vidual. When  a  member  of  a  firm  or  an  officer  of  a  company 
makes  a  declaration  in  his  own  name  for  and  on  behalf  of  his 
firm  or  company,  he  must  also  personally  execute  the  power  of 
attorney.  The  declaration  may  be  simply  witnessed,  but  the 
power  must  be  executed  before  and  be  attested  by  a  Notar-  Pub- 
lic, Magistrate  or  British  Consul,  but  not  by  a  Commissioner  for 
Oaths. 

Should  the  signatures  of  executants  or  attesting  officers  be  not 
perfectly  clear  and  legible,  it  is  important  that  the  names  be 
given  us  in  the  accompanying  letter  of  advice.  Also,  if  the  at- 
testation clause  or  other  matter  be  in  other  than  the  English 
language,  a  translation  of  same  should  be  made  on  a  separate 
sheet  accompanying  the  document. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
Offices.) 

Four  copies  of  the  trade  mark  are  required,  and  it  is  essential 
that  all  be  exactly  alike.  In  cases  where  the  same  device  is  used 
with  differing  distinguishing  letters  or  numbers,  the  four  labels 
supplied  should  all  be  of  the  one  kind,  and  alike  also  in  color. 

Assignments. 

For  the  purpose  of  recording  assignments  of  trade  marks,  the 
following  papers  are  required :  Power  of  attorney ;  deed  of 
assignment  and  four  copies  of  the  trade  mark. 

The  requirements  as  to  signatures,  attestation  and  similarity 
of  labels  are  the  same  as  for  original  registrations. 

Power  of  attorney  must  be  executed  by  the  person,  firm  or 
company  making  the  assignment,  and  to  be  attested  by  a  Notary 
Public,  Magistrate  or  British  Consul,  but  not  by  a  Commissioner 
of  Oaths.  Should  the  signature  of  the  attesting  officer  be  not 
perfectly  clear  and  legible,  the  name  should  be  mentioned  to  us 
in  the  letter  of  advice. 

Infringements. 

"Although  infringement  of  trade  marks  is  punishable  under 
certain  sections  of  the  Indian  Penal  Code,  and  the  importation  of 
infringing  trade  marks  is  preventable  under  the  Indian  Mer- 
chandise Marks  Act,  there  is  no  Act  in  India  for  their  registra- 
tion. The  law  under  which  declarations  of  ownership  of  trade 
marks  are  recorded  in  India  is  the  Indian  Registration  Act  which 
provides  for  the  registration  of  all  or  any  deeds  relating  to  mov- 
able or  immovable  property. 


INDIA 


277 


False  Mark  of  Origin. 

Regulations  of  peculiar  stringency  regarding  the  marking  of 
goods  imported  into  India  appear  to  be  lately  coming  into  force 
in  that  country.  The  Indian  Merchandise  Marks  Act  provides 
for  the  exclusion  of  any  goods  bearing  a  mark  such  as  falsely 
to  indicate  that  they  were  made  within  the  United  Kingdom  or 
British  India,  unless  there  be  joined  to  that  mark  an  equally 
conspicuous  indication  of  the  country  where  the  goods  are 
actually  made.  It  appears  now  to  be  held  by  the  customs  officials 
that  any  trade  mark  in  the  English  language  is  a  mark  indicating 
British  origin.  That,  therefore,  any  American-made  goods  bear- 
ing a  mark  in  the  English  language  must  have  added  to  the 
mark,  for  purposes  of  distinction,  the  words  ''Made  in  U.  S.  A.," 
or  their  equivalent.  This  rule,  giving  to  the  United  Kingdom 
a  monopoly  in  the  English  language  on  goods  imported  into 
India,  if  not  new,  has  only  lately  been  enforced.  The  American 
Consul  at  Bombay  now  reports  that  the  importers  of  an  American 
lock  bearing  the  mark  "Navy"  were  notified  that  hereafter  the 
name  must  be  accompanied  by  an  indication  of  the  country  of 
origin.  He  also  stated  that  notices  relating  to  the  importation 
of  other  articles  have  been  brought  to  the  attention  of  his  office. 

It  appears  that,  in  its  main  outline,  the  law  is  the  same  as 
the  common  law  of  Great  Britain.  The  person  who  first  uses 
the  mark  becomes  thereby  legally  entitled  to  its  use,  unless  un- 
der special  circumstances.  It  is,  however,  customary  to  regis- 
ter trade  marks  under  the  Indian  Registration  Act  in  the  same 
manner  as  deeds  of  real  property  are  registered,  for  the  purpose 
of  affording  proof  of  title  to  the  mark,  should  the  necessity  arise 
of  proving  such  title  in  the  prosecution  of  infringements.  It 
may  also  be  noted  that  a  trade  mark  may  be  registered  with  the 
Customs  House  in  Calcutta  for  the  purpose  of  preventing  the 
importation  into  India  of  other  goods  bearing  the  same  or  a 
similar  mark. 

Under  the  Indian  law  protection  is  given  to  trade  marks  as  a 
species  of  property  right,  the  law  recognizing  the  right  of  a 
trader  to  adopt  and  use  a  mark  for  the  purpose  of  identifying 
his  goods  and  to  prevent  others  from  using  the  same  mark,  or  a 
mark  so  similar  thereto  as  shall  deceive  purchasers  into  the  belief 
that  the  goods  which  he  is  selling  are  the  manufacture  of  another 
person.  In  case  of  proven  infringement  of  a  trade  mark,  the 
title  to  which  can  be  satisfactorily  established  by  the  complainant, 
prosecution  may  be  had  in  the  criminal  courts  under  the  pro- 
visions of  the  Penal  Code  and  the  Indian  Merchandise  Marks  Act 
as  well  as  in  the  civil  courts,  by  a  suit  for  damages,  an  injunction 
and  an  accounting  of  profits.  In  the  case  of  conviction  in  a 
criminal  proceeding,  a  fine  may  be  imposed,  and  imprisonment 
up  to  two  years.  In  addition  thereto,  the  court  in  either  civil 
or  criminal  cases  of  trade  mark  infringement  or  counterfeiting, 


278  ITALY 

may  direct  the  forfeiture  to  His  Majesty  of  all  goods  and  things, 
by  means  of,  or  in  relation  to  which,  the  offense  has  been  com- 
mitted, or,  but  for  the  conviction  of  the  offender,  would  have 
been  committed. 

The  Indian  Merchandise  Marks  Act  contains  further  pro- 
visions regarding  the  use  of  fraudulent  marks  upon  merchan- 
dise, and  is  modelled  after  the  English  Merchandise  Marks  Act 
of  1887.  It  provides  that  the  use  of  any  trade  description, 
untrue  in  a  material  respect,  falsely  stating  for  example  the 
manufacturer  of  the  goods,  the  number,  quantity,  measure  or 
weight  thereof,  or  the  place  or  country  where  they  were  pro- 
duced, or  the  mode  of  manufacture  or  production  thereof,  or 
the  materials  of  which  they  are  composed,  unless  it  be  shown 
to  have  been  used  without  fraudulent  intent,  is  punishable  by 
imprisonment  for  a  term  not  exceeding  three  months  or  by  a 
fine  not  exceeding  three  hundred  rupees. 


That  the  trade  mark  law  of  British  India  does  not  differ  mate- 
rially from  that  of  Great  Britain  is  shown  in  the  report  of  a 
recent  case  in  Bombay.  The  law  enforced  there  is  indeed  the 
English  common  law  and  the  decision  is  of  interest  only  as  it 
evidences  that  fact.  The  case  was  an  ordinary  suit  in  equity  for 
the  infringement  of  a  trade  mark  upon  white  shirting,  and  the 
decree  of  the  high  courts  of  Bombay  was,  in  effect,  that  the 
defendant  should  be  restrained  from  importing,  selling  or  expos- 
ing for  sale  in  India  any  white  shirting,  gotten  up  in  the  man- 
ner, and  with  the  numbers  shown  on  the  offending  sample,  or 
any  shirting  having  upon  it  the  number  44,000,  with  the  letter 
"c"  prefixed  to  it,  in  imitation  of  the  plaintiff's  number,  or  any 
buff  heading  or  ticket,  such  as  that  complained  of.  The  defend- 
ant was  also  ordered  within  one  week  to  remove  all  the  face  plaits 
from  the  white  shirting  in  the  Bombay  Customs  House  in  the 
presence  of  the  plaintiff's  representative,  and  to  destroy  them 
when  so  removed.  (Holland  Bombay  Trading  Co.,  Ltd.,  vs. 
Janowitzer,  Times  of  India,  Sept.  25,  1909.) 


ITALY 

The  territory  comprised  in  the  Kingdom  of  Italy  is  about  110,- 
000  English  square  miles.  The  population  in  1911  was  estimated 
at  34,565,198. 

The  government  consists  of  a  monarchy;  the  executive  power 
is  vested  in  the  King  and  His  Ministers.  The  Legislature  con- 
sists of  two  chambers,  the  Upper  House,  or  Senate,  and  the 
Lower  House,  or  House  of  Deputies.  The  latter  are  elected 
every  five  years,  or  on  a  dissolution  of  the  Ministry. 

Italy  is  essentially  an  agricultural  country  and  the  agricultural 


ITALY  279 

class  forms  the  backbone  of  her  population.  The  staple  products 
are  corn,  wine,  oil,  raw  silk  and  fruits.  Hemp  and  flax  are 
also  largely  grown  and  sulphur  is  also  largely  produced.  Cot- 
ton was  also  at  one  time  cultivated  to  some  extent,  but  at  the 
present  time  the  industry  is  almost  entirely  abandoned. 

Among  the  manufacturing  industries  of  Italy  silk  holds  the 
first  place.  Other  principal  industries  are  wine  growing,  the 
manufacture  of  cotton  goods,  olive  oil  and  sugar,  the  breeding 
of  cattle  and  also  the  rearing  of  poultry. 

MONEY — The  monetary  unit  of  Italy  is  the  lira=100  centimes 
=9  l/2d.=19  cents  U.  S. 

WEIGHTS  AND  MEASURES — The  metrical  system  has  been 
adopted. 

Laws. 

August  30,  1868,  and  January  16,  1898.  Regulations  of  Feb- 
ruary 7,  1869.  Treaty  of  June  1,  1884. 

Duration. 

The  term  of  protection  of  trade  marks  is  forever. 
Who  May  Apply. 

Whoever  adopts  a  mark  or  other  sign  to  distinguish  the 
products  of  his  industry,  the  goods  in  which  he  trades  or  animals 
of  a  breed  belonging  to  him  shall  have  the  exclusive  use  thereof, 
provided  he  files  it  as  prescribed  by  the  present  law.  (Art.  1.) 

Individuals,  associations  and  corporations  may  register  their 
marks.  Collective  marks  may  also  be  registered. 

Foreigners  may  register  their  lawful  trade  marks.  Citizens 
or  subjects  of  countries  with  which  Italy  has  concluded  treaties 
or  conventions  on  the  subject  are  entitled  to  priority,  provided 
they  make  application  for  registration  within  a  specified  time 
after  the  application  for  registration  in  the  country  of  origin. 

Conditions  of  the  Validity  of  Trade  Marks. 

The  conditions  of  validity  are  that  the  trade  mark  must  be 
different  from  those  already  legally  used  by  others  and  that  it 
must  contain : 

1.  The  name  of  the  manufacturer  or  dealer; 

2.  The  place  where  the  goods  come  from ; 

3.  The  indication  of  the  class  of  goods  in  respect  of  which  the 
trade  mark  is  to  be  used. 

An  exception  to  this  rule  is  only  made  for  small  objects  or  for 
animals,  in  which  cases  the  trade  mark  may  simply  consist  of 
initials  or  other  equivalent  design.  These  requirements  do  not 
apply,  however,  to  trade  marks  already  registered  in  a  foreign 
country  which  can  be  registered  in  Italy  in  the  same  form  in 
which  they  have  been  registered  abroad.  In  this  way  foreigners 


280  ITALY 

have  a  great  advantage  over  Italian  subjects,  because  a  for- 
eigner can  adopt  in  Italy  any  trade  mark  which  he  has  registered 
in  his  own  country,  whilst  Italian  subjects  are  compelled  to  insert 
their  name  and  address  upon  the  trade  mark,  which  is  sometimes 
very  objectionable. 

The  Italian  trade  mark  law  does  not  give  any  definition  of 
what  a  trade  mark  must  be,  but  Article  1  points  out  its  purpose 
and  the  conditions  for  its  validity. 

Requirements. 

Certified  copy  of  home  registration ;  four  copies  of  the  trade 
mark;  power  of  attorney,  signed  by  the  applicant  and  legalized 
by  an  Italian  Consul ;  a  description  of  the  goods  to  which  the 
mark  is  to  be  applied  and  of  the  manner  in  which  it  is  to  be 
used.  (Forms  for  application  may  be  obtained  from  B.  Singer's 
Offices.) 

Trade  marks  are  registered  without  preliminary  examination, 
except  so  far  as  the  formalities  of  the  application  are  concerned. 

Fees. 
The  registration  fee  is  40  lire. 

Assignments. 
Assignment  of  a  trade  mark  must  be  recorded. 

Infringement  and  Fines. 

Owners  of  Italian  trade  marks,  in  order  to  obtain  redress  in 
case  of  infringement  of  the  privileges  of  ownership  in  Italy, 
must  have  recourse  to  the  Civil  Tribunals  of  the  kingdom  in  the 
place  in  which  the  forgery  or  appropriation  of  the  trade  mark 
occurred,  or  where  the  article  to  which  the  false  mark  was  at- 
tached was  used  for  purposes  of  trade.  In  such  cases,  according 
to  the  terms  of  the  llth  Article  of  the  same  law,  the  Penal  Code 
can  be  brought  into  action,  and  need  not  be  limited  to  a  private 
prosecution.  The  fines  to  be  imposed,  over  and  above  the  amount 
of  loss~suffered  by  the  injured  party,  on  those  who  forge  and  ap- 
propriate trade  marks  are  fixed  by  the  12th  Article  of  the  same 
law. 

It  should  be  observed  that  the  5th  Article  of  the  law  prohibits 
the  illegal  appropriation  by  any  person  of  the  name  of  a  com- 
mercial firm,  of  the  sign  of  the  business  of  such  firm,  or  of  its 
characteristic  mark,  whether  belonging  to  natives  or  to  foreign- 
ers, even  when  such  articles  have  no  special  distinctive  sign  or 
trade  mark.  Several  sentences,  however,  of  the  Tribunals  and 
Courts  of  Appeal,  founded  on  the  7th  and  10th  Articles  of  the 
law  of  the  30th  of  August,  18G8,  have  decided  that  the  right  to 
the  exclusive  use  of  a  trade  mark  does  not  come  into  force  till 
the  date  of  the  deposit  at  the  Prefecture,  and  that,  therefore,  if 


ITALY  281 

anyone  uses  a  trade  mark  before  it  has  been  so  deposited,  he  not 
only  cannot  be  accused  of  forgery  by  any  person  who  may  have 
accidently  been  the  first  to  adopt  it  without  having  previously 
deposited  it  at  the  Prefecture,  but  he  will  be  entitled  to  use  it 
even  after  the  deposit  has  been  made. 

A  tradesman  may  not  suppress  the  manufacturer's  mark  or 
distinctive  sign  on  his  goods  without  the  manufacturer's  express 
consent,  but  he  may  add  his  own  trade  mark  or  distinctive  sign. 
(Art.  3.) 

Marks  or  distinctive  signs  already  lawfully  used  abroad  upon 
products  and  goods  of  foreign  manufacture  and  trade  which  are 
sold  in  Italy,  or  upon  animals  of  foreign  breed  born  in  the  King- 
dom, are  acknowledged  and  protected,  provided  that,  in  respect 
of  such  marks  and  signs,  the  provisions  established  for  Italian 
marks  and  signs  are  complied  with.  (Art.  4.) 
^  In  addition  to  the  prohibition  of  assuming  the  name  or  the 
signature  of  a  company  or  individual,  it  is  also  forbidden  to  as- 
sume the  commercial  style,  or  the  ensign  of  a  special  business, 
the  characteristic  emblem,  the  denomination  or  title  of  an  asso- 
ciation, or  institution,  either  foreign  or  national,  and  use  them 
for  shops,  articles  of  industry,  or  trade,  or  on  drawings,  engrav- 
ings, or  other  works  of  art,  even  when  such  style,  ensign,  em- 
blem, denomination  or  title  do  not  form  part  of  a  trade  mark  or 
distinctive  sign,  or  are  not  registered  in  accordance  with  this 
Act.  (Art.  5.) 

A  fine  which  may  amount  to  2,000  lire,  even  if  no  damage  has 
been  caused  to  third  parties,  will  be  charged  against : 

1.  Whoever  forges  a  mark  or  distinctive  sign,  or  uses  such 
mark  or  sign  knowing  the  same  to  be  false. 

2.  Whoever  consciously  puts  into  circulation,  sells,  or  imports 
from  abroad,  for  trade  purposes,  goods  bearing  false  trade  marks 
or  descriptive  signs. 

3.  Whoever,  without  forging  a  mark  or  distinctive  sign,  imi- 
tates it  fraudulently,  or  makes  use  consciously  of  a  mark  or  sign 
fraudulently  imitated. 

4.  Whoever  consciously  makes  use  of  marks,  signs,  ensigns 
or  emblems  bearing  indications  apt  to  deceive  customers  as  to  the 
origin  of  the  goods,  or  whoever  sells  goods  with  such  marks, 
signs  or  emblems. 

In  case  of  re-occurrence  of  the  offense  the  fine  may  be  raised 
to  4,000  lire. 

The  forged  trade  mark  or  sign,  the  instruments  used  for  forg- 
ing the  marks,  as  well  as  the  goods  to  which  the  false  marks  have 
been  applied,  will  be  seized. 

The  forged  marks,  signs,  ensigns  or  emblems  shall  be  re- 
stored at  the  expense  of  the  offender. 

The  above  penalties  are  applicable  without  any  prejudice  as 
to  the  payment  of  damages  to  the  parties  who  may  have  suf- 


282  ITALY 

fered  in  consequence  of  the  offense  and  apart  from  such  heavier 
penalties  as  are  enacted  by  the  Penal  Code  to  punish  forgery. 
(Art.  12.) 

Whoever  imports  into  the  country,  for  trading  purposes,  sells 
or  puts  otherwise  into  circulation,  works  or  industrial  products 
of  any  kind,  with  forged  or  false  names,  marks  or  distinctive 
signs,  or  under  names,  marks  or  distinctive  signs,  apt  to  deceive 
the  purchaser  as  to  the  origin  or  the  quality  of  the  work  or  of  the 
product,  is  liable  to  imprisonment  for  a  period  varying  from  one 
month  to  two  years,  and  to  the  payment  of  a  fine  which  varies 
between  50  lire  and  5,000  lire. 

Laws  in  Force  to  Prevent  the  Sale  or  Importation   of  Goods 
Bearing  a  False  Indication  of  Origin. 

Under  the  laws  in  force  the  importation,  sale  and  circulation 
of  goods  bearing  false  trade  marks  or  false  or  forged  marks  or 
distinctive  signs,  or  marks  or  distinctive  signs  which  might  de- 
ceive purchasers  in  regard  to  origin,  are  punishable  offenses. 
A  United  States  or  other  foreign  merchant,  having  registered  his 
trade  mark  in  Italy,  can  bring  a  civil  or  criminal  action  against 
anyone  who  counterfeits  his  trade  marks.  A  purchaser  can  take 
proceedings  if  he  can  prove  that  an  article  represented  as  of 
United  States  or  British  origin  has  been  manufactured  in  Italy. 
No  steps  are  taken  by  the  Government  to  prevent  the  importa- 
tion of  goods  bearing  a  false  indication  of  origin,  but  as  the 
customs  regulations  require,  for  purposes  of  duty,  a  correct  dec- 
laration of  the  country  of  origin,  there  is  some  check  on  whole- 
sale abuse.  In  some  cases  consular  certificates  are  demanded 
in  support  of  declaration  of  origin.  There  appear  to  be  no  re- 
quirements as  to  the  marking  of  imported  goods  to  denote  their 
country  of  origin  or  that  they  are  foreign. 

Marking  of  Goods :     "Marca  Depositata." 

Foreign  Trade  Marks. 

Article  1  of  the  Italian  trade  mark  law,  adopted  in  the  year  1868 
and  not  since  revised,  requires  that  a  trade  mark  "should  indicate 
the  place  of  origin,  the  factory  and  the  maker  in  such  way  as  to 
point  out  the  name  of  the  person  or  firm  by  whom,  and  the  es- 
tablishment from  which,  the  goods  are  issued."  The  Court  of 
Cassation  at  Turin  holds  that  this  does  not  require  the  use  of  the 
name  in  full.  A  mark  which  contains  merely  the  initials  of  the 
firm,  together  with  other  distinctive  symbols,  satisfies  every  re- 
quirement of  the  law.  Thus,  the  representation  of  the  bust  of 
a  woman  and  the  words  "a  la  Princesse,"  together  with  the  ini- 
tials of  the  firm  owning  the  mark,  is  a  distinctive  and  valid  trade 
mark  within  the  meaning  of  the  Italian  law. 

It  was  further  held  that  a  mark  legally  used  abroad  is  valid  in 


ITALY  283 

Italy,  even  though  it  does  not  comply  with  all  the  requirements 
of  the  Italian  law  as  to  form.  The  right  to  the  exclusive  use  of 
a  trade  mark  arises  in  Italy  in  favor  of  a  foreign  firm  from  the 
date  at  which  the  owner  can  show  adoption  and  use  of  the  mark 
abroad,  even  though  registration  was  not  made  in  Italy  (Bulletin, 
Vol.  VI,  208). 

Upon  an  application  to  cancel  a  foreign  mark,  by  reason  of  its 
failure  to  comply  with  the  provisions  of  Article  1  of  the  Italian 
law,  it  was  shown  that  the  mark  had  been  adopted  and  used  by 
the  defendant  abroad  prior  to  the  use  thereof  by  the  plaintiff. 
It  was  held  that  cancellation  could  not  be  decreed.  (Mantovani 
&  Co.  vs.  Rosenthal  Fleischer  &  Co.,  Bollettino  della  Prop.  Intel., 
1910,  p.  487.) 

Protection  of  Trade  Marks  in  Colonial  Possessions. 

At  the  time  the  trade  mark  law  of  Italy  was  enacted  the 
African  colonies  were  not  in  existence.  The  Minister  of  the 
proper  department  having  been  questioned  upon  the  subject,  has 
given  it  as  his  opinion  that  the  colonies  were,  nevertheless,  in- 
cluded in  the  protection  to  be  derived  from  registration,  but  the 
matter  has  never,  so  far  as  we  are  informed,  been  judicially  de- 
cided. Under  date  of  December  5,  1907,  however,  a  decree  gov- 
erning trade  marks  and  unfair  competition  was  promulgated  for 
Eritrea,  Abyssinia.  By  the  terms  of  this  decree  any  trader  or 
manufacturer  domiciled  in  the  colonies,  or  whose  marks  have 
previously  obtained  protection  in  Italy,  may  register  his  mark  for 
the  purpose  of  protection  in  that  colony.  The  wrongful  appro- 
priation or  imitation  of  the  names  of  persons  or  companies,  or 
of  the  signs  displayed  on  business  houses,  is  likewise  forbidden, 
as  is  also  imitation  of  the  form  or  color  or  general  appearance 
of  an  article  of  merchandise  in  such  manner  as  to  cause  con- 
fusion of  the  imitative  product  with  the  original.  Violation  of 
the  law  is  punished  by  fine,  up  to  2,000  lire,  without  prejudice  to 
the  right  to  recover  damages  in  a  civil  action. 

The  counterfeit  or  imitative  marks  are  confiscated.  Regula- 
tions for  putting  this  decree  into  effect  were  adopted  under  date 
of  March  5,  1908.  (Bollettino  della  Proprieta  Intelletuale,  1908, 
pp.  295,  356.) 

Construction  of  the  International  Convention. 

A  novel  point  of  international  law,  affecting  trade  mark  rights, 
was  raised  before  the  criminal  court  of  Naples,  Italy,  in  a  prose- 
cution for  trade  mark  infringement.  It  would  appear,  from  the 
report  of  this  case,  that  the  defendant  was  being  prosecuted  for 
infringement  of  a  trade  mark  that  had  not  been  directly  regis- 
tered in  Italy,  but  registered  there  only  by  the  International 
Bureau  at  Berne,  Switzerland,  after  registration  in  some  other 


country  of  the  International  Union.  It  will  be  recalled  that  the 
arrangement  for  the  international  registration  of  marks  between 
the  countries  to  this  arrangement  is  as  follows :  The  mark,  hav- 
ing first  been  registered  in  one  of  the  countries  of  the  Union  by 
a  citizen  thereof,  notice  of  this  registration  is  transmitted  to  the 
International  Bureau  at  Berne,-  Switzerland,  and  by  this  bureau 
transmitted  to  the  other  countries  of  the  Union  and  there  re- 
corded. The  mark  upon  which  the  prosecution  was  based  ap- 
pears to  have  been  recorded  in  Italy  in  this  manner. 

The  defendant  claimed  that  this  arrangement  for  the  inter- 
national registration  of  trade  marks  effected  at  Madrid  in  1891 
was  in  contravention  of  the  convention  of  Paris  of  1883  and  of 
the  Italian  trade  mark  law  made  in  accordance  therewith.  The 
convention  of  Paris  secures  to  foreign  citizens  of  one  of  the 
contracting  parties  in  Italy  the  same  rights  as  Italian  citizens, 
upon  the  condition  that  they  comply  with  the  requirements  im- 
posed upon  the  latter,  but  in  the  case  of  citizens  it  is  necessary, 
in  order  to  sustain  an  action  for  infringement,  that  the  mark  be 
registered  in  Italy  in  accordance  with  certain  formalities  pre- 
scribed by  the  law.  The  defendant  maintained  that  the  record 
of  registration  in  the  International  Bureau  at  Berne  transmitted 
to  the  Italian  Government  was  not  such  a  compliance  with  the 
terms  of  the  convention  of  1883  and  of  the  Italian  law  as  would 
enable  the  complainant  to  maintain  the  action.  The  court,  how- 
ever, held  that  the  arrangement  of  1883  was  subject  to  modifica- 
tion by  the  parties  thereto,  provided  such  modification  did  not 
diminish  the  protection  accorded  by  that  convention  and  that  the 
later  arrangement  for  the  international  registration  of  trade 
marks,  in  facilitating  the  registration  of  marks  by  foreigners, 
was  such  a  modification  as  merely  enlarged  the  protection  af- 
forded to  them  by  the  original  convention,  and,  insofar,  abrogated 
the  previous  requirements  as  to  the  formalities  that  must  be 
complied  with  by  foreigners  for  the  registration  and  conse- 
quent protection  of  their  marks  in  any  of  the  countries  of  the 
Union.  (Bouty  vs.  Vittozzo  Cyrus,  etc.,  La.  Prop.  Ind.,  1907, 
p.  11.) 

Unfair  Competition. 

By  a  decision  of  the  Court  of  Appeals  of  Perugia,  Messrs. 
Scott  &  Bowne  were  lately  upheld  in  the  right  to  the  use  of  the 
trade  name  "Scott"  in  connection  with  an  emulsion  of  cod  liver 
oil.  It  appeared  that  one  Trasciatti,  an  Italian,  placed  upon  the 
market  a  preparation  similar  to  the  American  article  which  he 
designated  as  "Emulsion  tipo  Scott,"  or  "Emulsion  of  the  Scott 
type."  While  conceding  the  right  of  the  defendant  to  make  an 
emulsion  exactly  identical  in  composition  with  the  American 
product  if  he  chose  to  do  so,  so  long  as  he  sold  it  without  trad- 
ing upon  the  name  of  the  former,  the  court  said  that  he  had  no 
right  to  identify  his  product  with  that  of  the  American  firm  in 


ITALY  285 

this  way.  Such  use  of  the  name  Scott  was  for  the  evident  pur- 
pose of  profiting  by  the  reputation  which  the  name  had  acquired 
in  connection  with  this  remedy.  If  the  defendant  had  wished  to 
identify  his  product  by  its  composition,  he  could,  in  the  view  of 
the  court,  easily  have  done  so  by  description,  as  by  the  words 
"An  emulsion  of  cod  liver  oil  with  hypophosphites  of  lime  and 
soda"  without  making-  use  of  the  name  Scott  in  that  connection. 
The  court  said  further: 

"The  right  of  free  competition  should  not  be  confused  with 
the  injury  of  another.  It  is  lawful  and  even  commendable  and 
for  the  public  interest,  that  by  the  use  of  every  honest  means 
a  trader  should  increase  his  business.  It  is  not  lawful  for  him 
to  invade  the  field  of  another  by  assimilating  his  products  to 
others  of  the  same  sort,  the  reputation  of  which  he  should  not 
be  allowed  to  enjoy." 

This  case  is  remarkable  in  that,  in  the  protection  it  affords,  it 
goes  quite  beyond  the  doctrine  of  unfair  competition  as  admin- 
istered in  the  United  States.  The  product  was  plainly  differen- 
tiated from  that  of  the  American  firm,  by  the  manner  in  which 
it  was  designated,  so  that  it  could  hardly  have  been  purchased 
by  any  one  in  the  belief  that  he  was  getting  the  American  prod- 
uct, but  only  in  the  belief  that  he  was  getting  something  made  in 
imitation  of  it  and  in  composition  the  same,  which  was  indeed  the 
fact.  (Scott  &  Bowne  vs.  Trasciatti,  Bollettino  della  Pro- 
prieta  Intellettuale,  1906  p.  7.) 

Penal  Liability  for  Infringement. 

The  owners  of  two  American  proprietary  remedies,  the  "Dr. 
Williams  Pink  Pills,"  and  the  "Santal  Midy  Capsules,"  have 
been  so  fortunate  within  the  last  year  as  to  secure  in  Italy  a 
valuable  judgment  in  criminal  proceedings  against  an  infringer, 
for  the  sale  of  preparations  made  in  counterfeit  of  their  own. 
The  defendant  was  charged  with  having  made  divers  sale  of 
these  counterfeits,  but  defended  upon  the  ground  that  he  had 
bought  the  medicines  in  good  faith,  believing  them  to  be  genuine, 
and  had  sold  them  in  the  same  belief.  His  somewhat  contradic- 
tory explanations,  however,  regarding  the  goods  and  the  state- 
ments made  by  him  to  those  to  whom  he  had  sold  and  attempted 
to  sell  the  goods,  seemed  to  the  court  abundantly  to  establish  his 
bad  faith.  The  criminal  court  at  first  instance  accordingly  sen- 
tenced him  to  imprisonment  for  two  months  in  close  confinement, 
to  the  payment  of  a  fine  of  100  francs  and  to  the  payment  of 
such  damages  as  might,  under  separate  inquiry,  be  found  to  have 
been  sustained  by  the  proprietors  of  the  preparations  in  question. 
The  counterfeit  goods  seized  in  his  place  of  business  were  or- 
dered to  be  destroyed.  The  court,  however,  suspended  sentence 
in  view  of  the  previous  good  reputation  of  the  defendant. 


286  ITALY 

From  this  sentence  the  defendant  appealed  to  the  Court  of 
Appeals  of  Rome,  which  court  found  the  judgment  of  the  court 
below  to  be  abundantly  sustained,  and  the  sentence  inflicted  to  be 
indeed  moderate,  to  say  the  least,  in  view  of  the  flagrancy  of  the 
offense  and  the  latitude  allowed  to  the  court  in  such  cases  by  the 
Penal  Code.  (La  Prop.  Ind.,  1910,  p.  99.) 

Unfair  Competition. 

Under  date  of  December  7,  1905,  the  Court  of  Cassation  of 
Turin,  Italy,  rendered  a  decision  touching  the  right  of  the 
owner  of  a  pharmacy  in  the  city  of  Genoa  to  protection  against 
the  use  by  another  of  the  like  designation  for  a  similar  business 
in  the  same  city.  The  business  of  the  plaintiff  was  denominated 
the  "International  Pharmacy."  The  defendant  opened  a  drug 
store  in  another  part  of  the  city  under  the  same  name,  where- 
upon the  plaintiff  brought  suit  to  enjoin  his  use  of  the  designa- 
tion. The  plaintiff  was  successful  in  the  court  of  first  instance, 
and  this  decision  was  confirmed  on  appeal. 

On  behalf  of  the  defendant  it  was  argued  first,  that  the  term 
was  in  common  use,  and  therefore  not  a  good  trade  mark;  sec- 
ond, that  it  was  descriptive,  having  reference  to  the  business 
conducted  there,  implying  that  it  was  a  pharmacy  where  various 
languages  were  spoken  and  foreign  medicines  were  sold;  third, 
that  it  was  not  originally  adopted  by  the  plaintiff  as  a  distinctive 
but  as  a  descriptive  designation,  and  therefore  should  not  be 
protected ;  fourth,  that  the  plaintiff's  trade  was  necessarily  merely 
local,  and  the  "sphere  of  influence"  of  the  sign  was  limited,  that 
accordingly  there  was  no  competition  between  the  two  houses. 
Each  of  these  several  contentions  was,  however,  overruled. 

As  to  the  first,  it  was  shown  that  the  word  ''International"  was 
used  in  Genoa  in  connection  with  divers  other  sorts  of  business, 
e.  g.,  that  of  a  bakery  and  liquor  store,  and  that  the  term  "Inter- 
national Pharmacy"  was  in  use  in  Milan  and  in  Rome.  It  was 
held,  however,  that  these  facts  did  not  effect  the  rights  of  the 
parties,  the  plaintiff  having  first  in  the  city  of  Genoa,  adopted  the 
word  as  a  designation  for  a  pharmacy. 

On  the  second  point,  it  was  held  that  the  word  was  not  de- 
scriptive, in  the  accepted  meaning  of  that  term  as  applied  to 
marks,  but  was  sufficiently  arbitrary  and  fantastic  as  applied  to 
a  pharmacy,  granting  that  it  conveyed  the  meaning  contended  by 
the  defense,  to  be  entitled  to  protection. 

The  third  argument,  based  upon  the  intent  of  the  plaintiff  in 
adopting  the  word,  was  held  to  be  irrelevant,  the  only  question 
before  the  court  being  as  to  the  character  of  the  word.  This 
being  entitled  to  protection,  any  inquiry  into  the  intent  of  the 
plaintiff  in  adopting  it  was  superfluous  and  inadmissible. 

Passing  upon  the  last  point,  the  court  held  that  within  the  limits 
of  a  single  city  it  would  not  inquire  into  the  territorial  extent  of 


JAMAICA  287 

the.  trade  which  each  drug  store  might  enjoy,  but  where  tlu 
question  was  one  of  unfair  competition,  it  would  suppress  the 
use  of  the  means  by  which  this  competition  was  carried  on. 

The  defendant  was  enjoined  from  the  use  of  the  word  "Inter- 
national" in  the  name  of  his  pharmacy.  (Piccone  vs.  Mosca- 
telli,  La  Legge.,  etc.,  d'ltalia,  190G,  p.  434.) 

Unfair  competition  involves  two  elements,  the  fraudulent  in- 
tent and  a  means  or  combination  of  means  adapted  to  carry  it 
out.  The  question  of  whether  the  means  adapted  are  calcu- 
lated to  cause  confusion  and  thereby  to  make  the  competition  un- 
fair, is  to  be  determined  with  reference  to  the  character  of  the 
consumers  of  the  goods,  to  the  place  where  the  goods  are  sold, 
and  to  the  usual  and  ordinary  attention  which  purchasers  give  in 
the  purchase  thereof. 

The  use  of  proper  names  with  fraudulent  intent  is  a  means  of 
unfair  competition,  when  adopted  with  the  intent  to  appropriate 
the  trade  of  another.  In  the  case  of  goods  commonly  intended 
for  the  great  mass  of  the  public  and  which  usually  do  not 
require  examination  in  their  purchase,  it  is  enough  that  the 
proper  name  should  constitute  the  principal -designation  of  the 
goods,  that  by  which  it  is  commonly  called  and  introduced  to 
purchasers,  and  that  the  accompanying  differences  be  slight  and 
inconspicuous.  So  in  the  sale  of  the  article  known  under  the 
name  "Fernet  Branca,"  what  attracts  the  attention  of  consumers 
is  the  designation  "Fernet  Fratelli  Branca"  and  all  accessories 
pass  unobserved  and  are  not  sufficient  to  distinguish  two  products 
of  the  same  name. 

By  reason  of  the  foregoing  considerations,  the  Judicial  Court 
of  Naples  required  the  firm  Fratelli  Branca  Fu  Carlos  e  C.  to 
change  its  firm  name  and  trade  marks,  as  well  as  to  pay  dam- 
ages and  costs  of  the  action.  (Fratelli  Branca  c.  Fratelli  Branca 
Fu  Carlos  e  C.,  Patentes  y  Marcas,  1906,  p.  11.) 


JAMAICA 

Jamaica  is  the  largest  of  the  British  West  India  Islands,  being 
144  miles  in  length  and  49  miles  in  extreme  breadth  and  con- 
taining an  area  of  about  4,207  square  miles.  About  800,000  acres 
are  under  cultivation.  The  climate  is  extremely  healthful.  The 
population  in  1911  was  estimated  at  861,000. 

The  following  are  the  principal  imports :  Foodstuffs,  liquors, 
tobacco  and  cigars,  furniture,  clothing,  hardware  and  ironmon- 
gery, building  machinery,  estates'  machinery  and  stores,  machin- 
ery, coal,  coke,  etc. 

MONEY,  WEIGHTS  AND  MEASURES — Same  as  Great  Britain. 


2&8  JAMAICA 

Laws. 
No.  37  of  May  23,  1911. 

Duration. 

The  registration  of  a  trade  mark  shall  be  for  a  period  of  four- 
teen years,  but  may  be  renewed  from  time  to  time  in  accordance 
with  the  provisions  of  this  law.  (Art.  29.) 

The  Registrar  shall,  on  application  made  by  the  registered 
proprietor  of  a  trade  mark  in  the  prescribed  manner  and  within 
the  prescribed  period,  renew  the  registration  of  such  trade  mark 
for  a  period  of  fourteen  years  from  the  expiration  of  the  original 
registration  or  of  the  last  renewal  of  registration,  as  the  case  may 
be,  which  date  is  herein  termed  "the  expiration  of  the  last  regis- 
tration." (Art.  30.) 

What  May  be  Registered. 

A  registrable  trade  mark  must  contain  or  consist  of  at  least 
one  of  the  following  essential  particulars : 

(1)  The  name  of  a  company,  individual,  or  firm  repre- 
sented in  a  special  or  particular  manner; 

(2)  The  signature  of  the  applicant  for  registration  or 
some  predecessor  in  his  business; 

(3)  An  invented  word  or  invented  words; 

(4)  A  word  or  words  having  no  direct  reference  to  the 
character  or  quality  of  the  goods,  and  not  being  according 
to  its  ordinary  signification  a  geographical  name  or  a  sur- 

.  name ; 

(5)  Any  other  distinctive  mark,  but  a  name,  signature, 
or  word  or  words,  other  than  such  as  fall  within  the  de- 
scriptions in  the  above  paragraphs  1,  2,  3,  and  4,  shall  not, 
except  by  order  of  the  Court,  be  deemed  a  distinctive  mark : 

Provided  always  that  any  special  or  distinctive  word  or  words, 
letter,  numeral,  or  combination  of  letters  or  numerals  used  as  a 
trade  mark  by  the  applicant  or  his  predecessors  in  business  be- 
fore the  first  day  of  April,  1889,  which  has  continued  to  be  used 
(either  in  its  original  form  or  with  additions  or  alterations  not 
substantially  affecting  the  identity  of  the  same)  down  to  the  date 
of  the  application  for  registration  shall  be  registrable  as  a  trade 
mark  under  this  law. 

For  the  purpose  of  this  section  "distinctive"  shall  mean  adapted 
to  distinguish  the  goods  of  the  proprietor  of  the  trade  mark  from 
those  of  other  persons. 

In  determining  whether  a  trade  mark  is  so  adapted  the  tribunal 
may,  in  the  case  of  a  trade  mark,  in  actual  use,  take  into  consider- 
ation the  extent  to  which  such  user  has  rendered  such  trade  mark 


JAMAICA  289 

in  fact  distinctive  for  the  goods  with  respect  to  which  it  is  regis- 
tered or  proposed  to  be  registered.  (Art.  9.) 

The  proprietor  of  any  trade  mark  registered  or  deemed  to  be 
registered  in  England  under  the  ''Trade  Marks  Act,  1905"  (Im- 
perial Act  5  Edward  7,  c.  15)  may,  if  such  trade  mark  is  not 
already  registered  or  deemed  to  be  registered  under  this  law  in 
respect  of  the  same  goods  or  description  of  goods  belonging  to 
some  other  person,  apply  to  have  such  trade  mark  registered 
under  this  law,,  on  lodging  with  the  Registrar  a  copy  purporting 
to  be  duly  certified  and  to  be  sealed  with  the  Seal  of  the  Patent 
Office  of  the  entry  in  the  register  kept  under  the  said  Act  relat- 
ing to  such  trade  mark,  including  a  copy  of  the  mark  and  dis- 
claimers, if  any.  It  shall  not  be  necessary  to  advertise  any  such 
application  and  the  Registrar  may  subject  to  an  appeal  to  the 
Court  refuse  any  such  application. 

If  such  trade  mark  is  already  registered  under  this  law  in  re- 
spect of  the  same  goods  or  description  of  goods  in  the  name  of 
some  person  other  than  the  applicant,  the  Registrar  shall  inform 
such  applicant  of  the  name  and  address  of  the  person  registered 
as  aforesaid.  (Art.  19.) 

Not  Registrable. 

It  shall  not  be  lawful  to  register  as  a  trade  mark  or  a  part  of 
a  trade  mark  any  matter,  the  use  of  which  would  by  reason  of 
its  being  calculated  to  deceive  or  otherwise  be  disentitled  to  pro- 
tection in  a  Court  of  Justice,  or  would  be  contrary  to  law  or 
morality,  or  any  scandalous  design.  (Art.  11.) 

Mode  of  Application  and  Procedure. 

(1)  Any  person  claiming  to  be  the  proprietor  of  a  trade  mark 
who  is  desirous  of  registering  the  same  must  apply  in  writing 
to  the  Registrar  in  the  prescribed  manner. 

(2)  Subject  to  the  provisions  of  this  law  the  Registrar  may 
refuse  such  application,  or  may  accept  it  absolutely  or  subject  to 
conditions,  amendments,  or  modifications. 

(3)  In  case  of  any  such  refusal  or  conditional  acceptance  the 
Registrar  shall,   if  required  by  the  applicant,   state  in  writing 
the  grounds  of  his  decision  and  the  materials  used  by  him  in  ar- 
riving at  the  same,  and  such  decision  shall  be  subject  to  appeal 
to  the  Court. 

(4)  An  appeal  under  this  section  shall  be  made  in  the  pre- 
scribed manner  and  on  such  appeal  the  Court  shall,  if  required, 
hear  the  applicant  and  the  Registrar,  and  shall  make  an  order 
determining  whether,  and  subject  to  what  conditions,   amend- 
ments or  modifications,  if  any,  the  application  is  to  be  accepted. 

(5)  Appeals  under  this  section  shall  be  heard  on  the  materials 
so  stated  by  the  Registrar  to  have  been  used  by  him  in  arriving 

19 


290  JAMAICA 

at  his  decision,  and  no  further  grounds  of  objection  to  the  ac- 
ceptance of  the  application  shall  be  allowed  to  be  taken  by  the 
Registrar,  other  than  those  stated  by  him,  except  by  leave  of  the 
Court.  Where  any  further  grounds  of  objections  are  taken  the 
applicant  shall  be  entitled  to  withdraw  his  application  without 
payment  of  costs  on  giving  notice  as  prescribed. 

(6)  The  Registrar  or  the  Court,  as  the  case  may  be,  may  at 
any  time,  whether  before  or  after  acceptance,  correct  any  error, 
in  or  in  connection  with  the  application,  or  may  permit  the  ap- 
plicant to  amend  his  application  upon  such  terms  as  they  may 
think  fit.  (Art.  12.) 

When  an  application  for  registration  of  a  trade  mark  has  been 
accepted,  whether  absolutely  or  subject  to  conditions,  the  Regis- 
trar shall,  as  soon  as  may  be  after  such  acceptance,  cause  the 
application  as  accepted  to  be  advertised  in  the  prescribed  man- 
ner. Such  advertisement  shall  set  forth  all  conditions  subject  to 
which  the  application  has  been  accepted.  (Art.  13.) 

Any  person  may  within  the  prescribed  time  from  the  date  of 
the  advertisement  of  an  application  for  the  registration  of  a  trade 
mark,  give  notice  to  the  Registrar  of  opposition  to  such  registra- 
tion. (Art.  14.) 

Requirements. 

Power  of  attorney;  where  a  trade  mark  is  registered  in  Great 
Britain  a  certified  copy  of  the  British  registration ;  three  fac- 
similes of  the  mark  and  one  electrotype.  (Form  for  application 
may  be  obtained  from  B.  Singer's  Offices.) 

Associated  Trade  Marks. 

If  application  be  made  for  the  registration  of  a  trade  mark  so 
closely  resembling  a  trade  mark  of  the  applicant  already  on  the 
register  for  the  same  goods  or  description  of  goods  as  to  be  cal- 
culated to  deceive  or  cause  confusion  if  used  by  a  person  other 
than  the  applicant,  the  tribunal  hearing  the  application  may  re- 
quire as  condition  of  registration  that  such  trade  marks  shall 
be  entered  on  the  register  as  associated  trade  marks.  (Art.  25.) 

Assignment. 

A  trade  mark  when  registered  shall  be  assigned  and  trans- 
mitted only  in  connection  with  the  good  will  of  the  business  con- 
cerned in  the  goods  for  which  it  has  been  registered  and  shall  be 
determinable  with  that  good  will.  (Art.  •>:>.) 

Associated  trade  marks  shall  be  assignable  or  transmissible 
only  as  a  whole  and  not  separately,  but  they  shall  for  all  other 
purposes  be  deemed  to  have  been  registered  as  separate  trade 
marks.  Provided  that  where  under  the  provisions  of  this  law 
user  of  a  registered  trade  mark  is  required  to  be  proved  for  any 


JAMAICA  291 

purpose,  the  tribunal  may  if  and  so  far  as  it  shall  think  right 
accept  user  of  an  associated  registered  trade  mark,  or  of  the 
trade  mark  with  additions  or  alterations  not  substantially  affect- 
ing its  identity,  as  an  equivalent  for  such  user.  (Art.  28.) 

Offenses  and  Penalties. 

If  any  person  makes  or  causes  to  be  made  a  false  entry  in  the 
register  kept  under  this  law,  or  a  writing  falsely  purporting  to  be 
a  copy  of  an  entry  in  any  such  register,  or  produces  or  tenders 
or  causes  to  be  produced  or  tendered  in  evidence  any  such  writ- 
ing, knowing  the  entry  or  writing  to  be  false,  he  shall  be  guilty 
of  a  misdemeanor,  and  on  conviction  thereof  shall  be  liable  to 
be  imprisoned  for  any  term  not  exceeding  two  years  with  or 
without  hard  labor.  (Art.  61.) 

(1)  Any  person  who  represents  a  trade  mark  as  registered 
which  is  not  so,  shall  be  liable  for  every  offense  on  summary 
conviction  before  a  Resident  Magistrate  or  two  Justices  of  the 
Peace  to  a  fine  not  exceeding  five  pounds  and  in  default  of  pay- 
ment to  imprisonment  with  or  without  hard  labor  for  any  term 
not  exceeding  two  months. 

(2)  Any  person  shall  be  deemed,  for  the  purposes  of  this 
enactment,  to  represent  that  a  trade  mark  is  registered,  if  he 
uses  in  connection  with  the  trade  mark  the  word  "registered"  or 
any  words  expressing  or  implying  that  registration  has  been  ob- 
tained for  the  trade  mark.     (Art.  62.) 

Classification. 
Same  as  British. 

Registration  to  be  Prima  Facie  Evidence  of  Validity. 

In  all  legal  proceedings  relating  to  a  registered  trade  mark 
(including  applications  under  Section  36  of  this  law)  the  fact 
that  a  person  is  registered  as  proprietor  of  such  trade  mark  shall 
be  prima  facie  evidence  of  the  validity  of  the  original  registra- 
tion of  such  trade  mark  and  of  all  subsequent  assignments  and 
transmissions  of  the  same.  (Art.  41.) 

Registration  to  be  Conclusive  After  Seven  Years. 

In  all  legal  proceedings  relating  to  a  registered  trade  mark 
(including  applications  under  Section  36  of  this  law)  the  original 
registration  of  such  trade  mark  shall  after  the  expiration  of  seven 
years  from  the  date  of  such  original  registration  (or  seven  years 
from  the  passing  of  this  law,  whichever  shall  last  happen)  be 
taken  to  be  valid  in  all  respects  unless  such  original  registration 
was  obtained  by  fraud,  or  unless  the  trade  mark  offends  against 
the  provisions  of  Section  11  of  this  law. 

Provided  that  nothing  in  this  law  shall  entitle  the  proprietor 
of  a  registered  trade  mark  to  interfere  with  or  restrain  the  user 


292  JAMAICA 

by  any  person  of  a  similar  trade  mark  upon  or  in  connection 
with  goods  upon  or  in  connection  with  which  such  person  has, 
by  himself  or  his  predecessors  in  business,  continuously  used 
such  trade  mark  from  a  date  anterior  to  the  user  of  the  first- 
mentioned  trade  mark  by  the  proprietor  thereof  or  his  prede- 
cessors in  business,  or  to  object  (on  such  user  being-  proved)  to 
such  person  being  put  upon  the  register  for  such  similar  trade 
mark  in  respect  of  such  goods  under  the  provisions  of  Section 
22  of  this  law.  (Art.  42.) 

Unregistered  Trade  Mark. 

No  person  shall  be  entitled  to  institute  any  proceeding  to 
prevent  or  to  recover  damages  for  the  infringement  of  an  un- 
registered trade  mark  unless  such  trade  mark  was  in  use  before 
the  first  of  April,  1889,  and  has  been  refused  registration  under 
this  law  or  any  law  repealed  by  this  law.  The  Registrar  may,  on 
request,  grant  a  certificate  that  such  registration  has  been  re- 
fused. (Art.  43.) 

"Passing  Off"  Action. 

Nothing  in  this  law  contained  shall  be  deemed  to  affect  rights 
of  action  against  any  person  for  passing  off  goods  as  those  of 
another  person  or  remedies  in  respect  thereof.  (Art.  46.) 

.    LEGAL  PROCEEDINGS. 
Certificate  of  Validity. 

In  any  legal  proceeding  in  which  the  validity  of  the  registra- 
tion of  a  registered  trade  mark  comes  into  question  and  is  de- 
cided in  favor  of  the  proprietor  of  such  trade  mark,  the  Court 
may  certify  the  same,  and  it  so  certifies  then  in  any  subsequent 
legal  proceeding  in  which  such  validity  comes  into  question  the 
proprietor  of  the  said  trade  mark  on  obtaining  a  final  order  or 
judgment  in  his  favor  shall  have  his  full  costs,  charges  and  ex- 
penses as  between  solicitor  and  client,  unless  in  such  subsequent 
proceeding  the  Court  certifies  that  he  ought  not  to  have  the  same. 
(Art.  47.) 

Registrar  to  Have  Notice  of  Proceeding  for  Rectification. 

In  any  legal  proceeding  in  which  the  relief  sought  includes 
alteration  or  rectification  of  the  register,  the  Registrar  shall  have 
the  right  to  appear  and  be  heard,  and  shall  appear  if  so  directed 
by  the  Court.  Unless  otherwise  directed  by  the  Court,  the 
Registrar  in  lieu  of  appearing  and  being  heard  may  submit  to 
the  Court  a  statement  in  writing  signed  by  him,  giving  par- 
ticulars of  the  proceedings  before  him  in  relation  to  the  matter 


JAMAICA  293 

in  issue  or  of  the  grounds  of  any  decision  given  by  him  affecting 
the  same  or  of  the  practice  of  the  office  in  like  cases,  or  of  such 
other  matters  relevant  to  the  issues,  and  within  his  knowledge  as 
such  Registrar,  as  he  shall  think  fit,  and  such  statement  shall 
be  deemed  to  form  part  of  the  evidence  in  the  proceeding.  (Art. 
48.) 

Costs. 

In  all  proceedings  before  the  Court  under  this  law  the  costs 
of  the  Registrar  shall  be  in  the  discretion,  of  the  Court,  but  the 
Registrar  shall  not  be  ordered  to  pay  the  costs  of  any  other  of  the 
parties.  (Art.  49.) 

EVIDENCE. 
Mode  of  Giving  Evidence. 

In  any  proceeding  under  this  law  before  the  Registrar,  the 
evidence  shall  be  given  by  statutory  declaration  in  the  absence 
of  directions  to  the  contrary,  but,  in  any  case  in  which  the  Regis- 
trar shall  think  it  right  so  to  do,  he  may  (with  the  consent  of 
the  parties)  take  evidence  viva  voce  in  lieu  of  or  in  addition  to 
evidence  by  declaration.  Any  such  statutory  declaration  may 
in  the  case  of  appeal  be  used  before  the  Court  in  lieu  of  evidence 
by  affidavit,  but  if  so  used  shall  have  all  the  incidents  and  con- 
sequences of  evidence  by  affidavit. 

In  case  any  part  of  the  evidence  is  taken  viva  voce  the  Regis- 
trar shall  have  power  to  require  the  attendance  of  witnesses  and 
the  production  of  documents  and  to  take  evidence  on  oath,  and 
shall  for  the  purposes  of  any  proceeding  under  this  law  before 
him  have  all  the  powers  possessed  by  the  Registrar  of  the  Su- 
preme Court  in  relation  to  proceedings  in  the  Supreme  Court, 
and  the  Court  shall  have  power  to  enforce  the  orders  of  the 
Registrar  as  if  they  were  those  of  a  Judge.  (Art.  50.) 

Sealed  Copies  to  be  Evidence. 

Printed  or  written  copies  or  extracts  of  or  from  the  register, 
purporting  to  be  certified  by  the  Registrar  and  sealed  with  the 
seal  of  the  General  Register  Office,  shall  be  admitted  in  evidence 
in  all  Courts  in  this  Island  and  in  all  proceedings,  without  fur- 
ther proof  or  production  of  the  originals.  (Art.  51.) 

Certificate  of  Registrar  to  be  Evidence. 

A  certificate  purporting  to  be  under  the  hand  of  the  Registrar 
as  to  any  entry,  matter  or  thing  which  he  is  authorized  by  this 
law,  or  rules  made  thereunder,  to  make  or  do,  shall  be  prima 
facie  evidence  of  the  entry  having  been  made,  and  of  the  con- 


294  JAPAN 

tents  thereof,  and  of  the  matter  or  thing  having  been  done  or 
not  done.     (Art.  52.) 

POWERS  AND  DUTIES  OF  REGISTRAR  OF  TRADE.  MARKS. 
Exercise  of  Discretionary  Power  by  Registrar. 

Where  any  discretionary  or  other  power  is  given  to  the  Regis- 
trar by  this  law  or  rules  made  thereunder  he  shall  not  exercise 
that  power  adversely  to  the  applicant  for  registration  or  the 
registered  proprietor  of  the  trade  mark  in  question  without  (if 
duly  required  so  to  do  within  the  prescribed  time)  giving  such 
applicant  or  registered  proprietor  an  opportunity  of  being  heard. 
(Art.  53.) 

Appeal  from  Registrar. 

Except  where  expressly  given  by  the  provisions  of  this  law 
or  rules  made  thereunder  there  shall  be  no  appeal  from  a  de- 
cision of  the  Registrar,  but  the  Court  in  dealing  with  any  ques- 
tion of  the  rectification  of  the  register  (including  all  applica- 
tions under  the  provisions  of  section  36  of  this  law)  shall  have 
power  to  review  any  decision  of  the  Registrar  relating  to  the 
entry  in  question,  or  the  correction  sought  to  be  made.  (Art.  54.) 

Where  by  this  law  any  act  has  to  be  done  by  or  to  any  person 
in  connection  with  a  trade  mark  or  proposed  trade  mark  or  any 
procedure  relating  thereto,  such  act  may  under  and  in  accordance 
with  rules  made  under  this  law  or  in  particular  cases  by  special 
leave  of  the  Court  be  done  by  or  to  an  agent  of  such  party  duly 
authorized  in  the  prescribed  manner.  (Art.  55.) 

Registrar  May  Take  Direction  of  Law  Officer. 

The  Registrar  may,  in  any  case  of  doubt  or  difficulty  arising 
in  the  administration  of  any  of  the  provisions  of  this  law,  apply 
to  His  Majesty's  Attorney-General  for  Jamaica  for  directions 
in  this  matter.  (Art.  56.) 


JAPAN 

Japan  consists  of  five  large  islands,  viz :  Honshiu  (the 
Japanese  mainland),  Shikoku,  Kiushiu,  Hokkaido  (Yezo)  and 
Formosa,  together  with  several  smaller  groups  of  islands.  It 
has  an  area,  including  the  small  islands,  of  161,208  square  miles 
with  an  estimated  population  in  1911,  including  Korea,  of  65,- 
000,000.  Formosa  has  an  area  of  13,458  square  miles  and  an 
estimated  population  of  3,200,000.  By  the  treaty  of  peace  signed 
on  Sept.  5,  1905,  Russia  ceded  to  Japan  the  lease  of  Port  Arthur, 
Ta  Lien,  etc.,  and  also  half  of  the  island  of  Saghalien  (area 


JAPAN  295 

about  30,000  square  miles,  with  an  estimated  population  of  29,- 
800.) . 

Japan  is  a  constitutional  empire  and  the  Emperor  exercises 
the  supreme  executive  and  legislative  powers  with  the  assistance 
of  his  Ministers  appointed  by  himself.  The  Legislature  con- 
sists of  a  House  of  Peers  and  a  House  of  Representatives. 

The  chief  agricultural  products  of  Japan  are  wheat,  rice,  silk, 
tea,  tobacco,  wax,  cotton  and  vegetables. 

The  mineral  products  consist  of  gold,  silver,  copper,  lead  and 
iron,  also  coal;  of  the  latter  over  10,000,000  tons  are  annually 
produced.  Other  mineral  products  found  are  antimony,  man- 
ganese, cobalt  and  oxide  of  iron ;  and  of  non-metallic  substances, 
petroleum,  sulphur,  kaolin,  asphalt,  marble. 

Among  the  principal  manufactures  of  Japan  may  be  mentioned 
sake,  a  fermented  beverage  extracted  from  rice,  and  also  the 
camphor  industry  (a  Government  monopoly),  the  cotton  spin- 
ning mills,  the  silk  spinning  mills,  cement  works,  glass  works, 
rope  factories  and  match  factories.  The  principal  imports  are 
woolen  and  cotton  tissues,  petroleum,  iron  and  steel  machinery, 
etc. 

MONEY — The  yen  is  the  legal  monetary  unit  in  Japan,  value 
about  2s.  0^d.=49  cents  U.  S. 

WEIGHTS — The  kin  is  equal  to  the  catty,  or  600  grammes  of 
the  metric  system  of  weights,  or  1.32277  pounds  English  avoir- 
dupois weight.  The  pound  and  ton  are  English  avoirdupois 
weights. 

MEASURES — The  square  foot  and  the  square  yard  are  the 
English  surface  measure  and  are  respectively  equal  to  0.0929 
and  0.8361  of  a  square  metre. 

The  cubic  foot  is  the  English  cubic  measure,  and  is  equal  to 
0.0232  of  a  cubic  metre. 

The  gallon  is  the  standard  wine  measure  of  the  United  States 
of  America. 

The  litre  and  hectolitre  are  the  measures  of  capacity  of  the 
metric  system. 

Law. 

Law  No.  25  of  April  2,  1909. 

Term. 

The  period  of  duration  of  a  trade  mark  right  is  twenty  years. 

The  period  may  be  renewed. 

A  trade  mark  for  which  registration  is  obtained  as  a  regis- 
tered trade  mark  of  a  foreign  country  expires  with  the  trade 
mark  right  in  the  original  country.  However,  the  period  of  du- 
ration of  such  trade  mark  may  not  exceed  twenty  years.  (Art. 


296  JAPAN 

Who  May  Apply. 

A  person  who  intends  to  have  the  exclusive  use  of  a  trade 
mark  in  order  to  indicate  that  goods  are  produced,  manufac- 
tured, worked  up,  selected,  certified,  handled  or  sold  by  him  as 
a  business,  may  obtain  registration  of  such  trade  mark  under 
this  law.  (Art.  1.) 

What  May  Be  Registered. 

A  trade  mark  for  which  registration  may  be  obtained  must 
consist  of  letters,  devices  or  signs,  or  their  combinations,  and 
must  be  distinctive  and  conspicuous. 

A  trade  mark  may  be  registered  with  a  designation  of  the 
colors  to  be  used  thereon. 

What  May  Not  Be  Registered. 

In  the  case  of  the  following  trade  marks  registration  is  not 
granted : 

1.  One  containing  a  device  identical  with,  or  similar  to,  the 
Imperial  Chrysanthemum  Crest. 

2.  One  identical  with,  or  similar  to,  the  national  flag,  the 
army  or  navy  ensign,  a  decoration,  a  medal  of  merit  or  a  badge, 
or  the  national  flag  of  a  foreign  country. 

3.  One  liable  to  disturb  public  order  or  morals,  or  to  deceive 
the  public. 

4.  One  identical  with,  or  similar  to,  a  mark  commonly  used 
on  the  same  kind  of  goods. 

5.  One  identical  with,  or  similar  to,  a  mark  known  to  the 
public  to  belong  to  another  person  and  to  be  used  on  the  same 
kind  of  goods. 

6.  One  identical  with,  or  similar  to,  the  device  of  the  Red 
Cross  on  a  white  ground  or  the  name  of,  or  characters  for,  Red 
Cross  or  Geneva  Cross. 

7.  One  containing  a  device  identical  with,  or  similar  to,  a 
prize  medal,  a  diploma  of  honor,  or  a  certificate  of  merit,  of  an 
exposition  or  competitive  exhibition  held  by  the  government  or 
"Do,"  "Fu"  or  "Ken,"  or  by  those  who  have  received  the  per- 
mission of  the  government,  or  of  an  exposition  held  in  a  for- 
eign country  by  the  government  thereof,  or  an  international  ex- 
position held  in  a  foreign  country  with  the  permission  of  the 
government  thereof.    However,  when  a  person  who  has  obtained 
such  a  prize  medal,  diploma  of  honor,  or  certificate  of  merit 
desires  to  use  it  as  a  part  of  his  trade  mark,  this  provision  is 
not  applicable. 

8.  One  containing  a  likeness,  the  personal  name,  or  the  firm 
name,  of  another  person,  or  the  title  of  a  juridical  person  or 


JAPAN  297 

partnership.     However,  a  person  who  has  obtained  permission 
therefor  is  not  subject  to  this  provision. 

9.  One  identical  with,  or  similar  to,  a  trade  mark  of  another 
person  in  the  case  of  which  one  year  has  not  elapsed  since  the 
loss  of  validity  of  the  registration  thereof.  However,  in  cases 
where  it  has  remained  unused  for  more  than  one  year  previous 
to  the  loss  of  validity  of  the  registration  thereof,  this  provision 
is  not  applicable.  (Art.  2.) 

Mode  of  Application. 

An  application  must  be  accompanied  by  power  of  attorney,  a 
certificate  of  nationality  and  a  specimen  of  the  trade  mark,  also 
the  filing  fee. 

The  applicant  must  definitely  specify  the  goods  to  which  the 
trade  mark  is  to  be  applied  or  used. 

The  application  shall  be  made  separately  for  each  class  of 
goods  on  which  the  trade  mark  is  to  be  used,  according  to  the 
annexed  official  classification. 

If  the  applicant  desires  to  obtain  registration  of  a  trade  mark 
limiting  the  colors  to  be  used  thereon,  he  must  designate  the 
colors  in  the  application  and  must  file  a  colored  specimen. 

If  an  applicant  desires  to  obtain  registration  as  an  associate 
trade  mark  of  a  trade  mark,  which  is  similar  to  a  registered  trade 
mark,  he  must  file  the  registration  certificate  of  such  registered 
trade  mark,  in  which  it  is  necessary  that  the  registration  number 
of  such  associate  trade  mark  be  entered  by  the  Patent  Office. 

A  person  who  desires  to  obtain  the  registration  of  a  trade 
mark  in  the  Empire  as  a  foreign  registered  mark  shall  attach 
to  the  application  the  registration  certificate  of  the  original  coun- 
try and  any  other  document  sufficient  to  prove  the  trade  mark 
registered  in  the  original  country  and  the  date  of  registration 
thereof. 

With  reference  to  trade  marks  which  have  been  registered  in 
the  Empire  as  foreign  registered  trade  marks,  a  person  who  de- 
sires to  apply  for  the  registration  of  renewal  of  the  period  of 
duration  of  his  trade  mark  right  in  the  Empire,  after  an  applica- 
tion for  registration  of  renewal  of  the  period  of  duration  of  such 
trade  mark  right  has  been  granted  in  the  original  country,  shall 
attach  to  the  application  document  sufficient  to  prove  that  the 
application  has  been  granted  in  the  original  country.  (Art.  11.) 

The  Director  of  the  Patent  Office  may,  if  he  deem  it  necessary, 
order  an  applicant  for  the  registration,  of  a  trade  mark  to  present 
a  written  explanation  regarding  such  trade  mark.  (Art.  12.) 

A  person  who  desires  to  obtain  registration  of  renewal  of  the 
period  of  duration  of  a  trade  mark  right,  shall  present  to  the 
Patent  Office  an  application  accompanied  by  the  registration  cer- 
tificate three  months  before  the  date  of  expiration  of  such  period. 

Even  after  the  limit  of  time  mentioned  in  the  preceding  para- 


298  JAPAN 

graph,  the  application  mentioned  in  the  preceding  paragraph 
may  be  presented  on  the  payment  of  a  fee  specially  prescribed, 
provided  that  it  is  before  the  expiration  of  the  period  of  duration 
of  the  trade  mark  right.  (Art.  14.) 

When  a  decision  or  judgment  has  been  rendered  to  the  effect 
that  a  trade  mark  should  be  registered,  the  applicant  or  the  per- 
son making  the  request  shall  pay  the  trade  mark  fee  within  sixty 
days  from  the  date  of  receipt  of  delivery  of  the  written  decision 
or  judgment,  and  shall  present  to  the  Patent  Office  a  block  for 
printing  the  trade  mark.  (Art.  15.) 

Registration  certificates  shall  be  made  out  in  accordance  with 
Forms  4  to  18,  inclusive,  and  the  Director  of  the  Patent  Office 
shall  sign  his  name  and  impress  his  seal  thereon. 

The  registration  certificate  shall  have  a  specimen  of  the  trade 
mark  pasted  thereon.  (Art.  18.) 

Documents  Required. 

For  making  an  application  for  the  registration  of  a  trade  mark, 
the  following  documents,  etc.,  complete  in  every  way,  must  be 
filed. 

Power  of  attorney  (see  Form  No.  17,  B.  Singer's  Book  of 
Forms);  certificate  of  nationality;  ten  specimens  of  the  trade 
mark ;  four  blocks. 

As  soon  as  the  application  is  granted  a  block  for  printing  the 
trade  mark  must  be  sent  to  the  Patent  Office  and  it  is  therefore 
advisable  to  send  the  same  with  the  documents.  The  block  may 
be  made  of  wood,  zinc,  copper  or  any  other  material  adapted 
for  type-printing  and  must  not  exceed  3-15/16  inches  in  length 
and  breadth,  and,  in  case  of  a  trade  mark  consisting  of  characters 
or  letters,  must  not  exceed  2  9/16  inches  in  length  and  breadth. 
The  thickness  of  these  blocks  must  not  exceed  15/16  inch;  they 
must  be  made  in  one  piece  and  must  also  be  right-angled  quadri- 
lateral with  the  entire  figure  of  the  trade  mark  engraved  on  its 
surface. 

If  it  is  desired  to  make  application  under  the  rules  of  the  In- 
ternational Union  for  the  Protection  of  Industrial  Property,  or, 
if  an  applicant  desires  it  to  be  known  that  his  trade  mark  is  al- 
ready registered  in  his  own  country,  though  after  the  period  of 
four  months  in  Convention  has  elapsed,  a  copy  of  original  ap- 
plication or  a  copy  of  registration  certificate,  or  an  official  trade 
mark  Gazette,  certified  by  the  Government  of  the  country  where 
the  original  application  was  made,  must  be  filed ;  and  these  papers 
must  contain  the  dates  of  original  application  and  of  the  regis- 
tration. 

When  registration  for  a  trade  mark  which  is  complicated  has 
been  applied  for,  a  description  giving  an  exact  explanation  of 
such  trade  mark  with  reference  to  the  specimen  must  be  sent. 


JAPAN  299 

In  case  of  absolute  necessity  the  Director  of  the  Patent  Office 
may  order  the  applicant  to  send  in  a  model  or  specimen  of  the 
specified  articles  on  which  his  trade  mark  is  used;  such  of  the 
models  or  specimens  deposited  as  the  Director  of  the  Patent 
Office  may  not  deem  it  necessary  to  retain  may,  if  so  desired,  be 
returned  to  the  applicant. 

Assignments, 

In  case  the  right  to  a  trade  mark  under  application  for  regis- 
tration or  to  a  registered  trade  mark,  has  been  affected  either  by 
sale  or  gift  or  succession  or  agreement  of  joint  ownership,  or 
by  any  other  similar  cause,  the  registration  of  alteration  of  the 
name  of  applicant  or  registrant  must  be  applied  for  by  both 
parties  (assignee  and  assignor)  within  one  year  (excepting  in 
case  of  inheritance). 

The  right  to  a  trade  mark  may  be  transferred  only  in  case  the 
right  is  transferred  together  with  the  business ;  in  such  case,  the 
right  may  be  transferred  by  division  according  to  the  goods  on 
which  the  mark  is  used. 

The  right  of  associated  trade  marks  may  not  be  transferred 
separately  by  division. 

Documents  required:  Power  of  attorney  signed  by  assignor; 
power  of  attorney  signed  by  assignee;  certificate  of  nationality 
of  assignee;  assignment  (stating  the  condition  under  which 
the  assignment  is  made,  or  a  document  sufficient  to  prove  that 
the  applicant  is  the  successor)  ;  registration  certificate  (if  regis- 
tered trade  mark). 

Proceedings. 

An  interested  party  or  parties  may  demand  a  trial  before  the 
Patent  Office  with  reference  to  the  following  matters: 

1.  To  annul  the  trade  mark  which  has  been  registered  unlaw- 
fully, namely,  that  which  falls  under  the  rules  of  clause  "Invali- 
dation of  registration  of  trade  mark." 

However,  in  case  where  a  registered  trade  mark  has  contra- 
vened the  rules  of  clause  "Trade  marks  which  cannot  be  regis- 
tered," the  demand  for  trial  may  not  be  made  when  three  years 
have  elapsed  from  the  date  on  which  the  trade  mark  was  pub- 
lished in  the  Official  Trade  Mark  Journal. 

2.  For  the  determination  of  the  limits  of  a  trade  mark  right 
in  cases  where  two  or  more  registered  trade  marks  are  found 
to  be  in  conflict  with  one  another,  or  registered  trade  marks  are 
found  to  be  in  conflict  with  the  trade  marks  which  are  not  regis- 
tered. 

Any  person  who  is  not  satisfied  with  the  decision  in  trial  or 
with  the  decision  on  re-examination  may  within  sixty  days  from 


JAPAN 

the  receipt  of  the  written  statement  of  the  decision  demand  a 
trial  on  appeal  before  the  Patent  Office. 

Any  person  who  is  not  satisfied  with  a  judgment  given  in  trial 
on  appeal,  by  the  Patent  Office,  may  bring  an  action  in  the  Su- 
preme Court  within  sixty  days  from  the  date  when  the  written 
judgment  reaches  him,  only  in  case  where  the  reason  is  that  the 
judgment  has  contravened  laws.  However,  with  reference  to  a 
judgment  regarding  a  decision  on  re-examination,  this  rule  is 
not  applicable. 

Penalty. 

A  person  coming  under  one  of  the  following  items  is  liable 
to  penal  servitude  not  exceeding  five  years  or  a  fine  not  exceed- 
ing one  thousand  yen : 

1.  A  person  who  has  used  a  registered  trade  mark  belonging 
to  another  person,  or  containers,  wrappers,  et  cetera,  bearing  it, 
on  identical  goods ;  or  a  person  who  delivers  or  sells  such  goods, 
or  has  them  in  possession  for  the  purpose  of  delivery  or  sale. 

2.  A  person  who  delivers  or  sells  a  registered  trade  mark 
belonging  to  another  person,  or  containers,  wrappers,  et  cetera, 
bearing  it,  with  the  object  of  causing  them  to  be  used  on  iden- 
tical goods ;  or  a  person  who  has  them  in  possession  for  the  pur- 
pose of  delivery  or  sale. 

3.  A  person  who  has  counterfeited  or  imitated  a  trade  mark 
belonging  to  another  person  with  the  object  of  using  it,  or  caus- 
ing it  to  be  used,  on  identical  goods. 

4.  A  person  who  has  delivered  or  sold  a  counterfeited  or  imi- 
tated trade  mark  with  the  object  of  causing  it  to  be  used  on 
identical  goods,  or  has  used  it  on  identical  goods. 

5.  A  person  who  delivers  or  sells  identical  goods  on  which  a 
counterfeited  or  imitated  trade  mark  is  used ;  or  a  person  who 
has  them  in  possession  with  the  object  of  delivery  or  sale. 

6.  A  person  who  has  imported,  with  the  object  of  delivery  or 
sale,  goods  on  which  a  trade  mark  identical  with,  or  similar  to, 
a  registered  trade  mark  belonging  to  another  pers6n  is  used ;  or 
a  person  who  delivers  or  sells  such  goods,  or  has  them  in  pos- 
session with  the  object  of  delivery  or  sale. 

7.  A  person  who  manufactures,  delivers,  sells,  or  has  in  pos- 
session, necessary  implements  for  the  purpose  of  counterfeiting 
or  imitating  a  registered  trade  mark  belonging  to  another  person. 

8.  A  person  who,  with  reference  to  identical  goods,  has  em- 
ployed in  an  advertisement,  a  sign  board,  a  hand  bill,  a  cata- 
logue, or  any  other  mercantile  papers  used  in  his  business,  a 
trade  mark  identical  with,  or  similar  to,  a  registered  trade  mark 
belonging  to  another  person. 

The  offenses  mentioned  in  the  preceding  paragraph  are  tried 
upon  complaint  of  the  injured  parties.  (Art.  23.) 

A  person  coming  under  one  of  the  following  items  is  liable 


JAPAN  301 

to"  penal  servitude  not  exceeding  three  years,  or  a  fine  not  ex- 
ceeding three  hundred  yen : 

1.  A  person  who  has  obtained  registration  of  a  trade  mark 
by  a  fraudulent  act. 

2.  A  person  who  has  employed  on  an  unregistered  trade  mark 
an  indication  of  registration  or  an  indication  liable  to  be  con- 
fused therewith,  and  has  used  it  on  goods ;  or  a  person  who  de- 
livers or  sells  such  goods,  or  has  them  in  possession  with  the 
object  of  delivery  or  sale. 

3.  A  person  who,  without  obtaining  registration,  has  used 
in  an  advertisement,  signboard,  handbill,  et  cetera,  a  trade  mark 
containing  an  indication  of  registration  or  an  indication  liable 
to  be  confused  therewith.     (Art.  24.) 

FEES. 
Imperial  Ordinance  No.  505  of  Oct.  23,  /pop. 

Application  for  the  registration  of  a  trade  mark  or 

mark,  for  each  instance Yen  3.00 

Notification  of  a  change  in  the  name  of  an  applicant  for 
registration  of  a  trade  mark  or  mark,  for  each  in- 
stance   Yen  1.50 

Request  for  duplicate  of  a  trade  mark  or  mark  registra- 
tion certificate,  for  each  instance .Yen  1.50 

Application  for  registration  of  renewal  of  the  period  of 
duration  of  a  trade  mark  or  mark  right,  for  each 
instance  Yen  2.00 

Request  for  cancellation  of  registration  of  a  trade  mark 

or  mark,  for  each  instance Yen  5.00 

Request  for  prolongation  of  a  prescribed  period,  for 

each  instance Yen  .50 

Request  for  avoiding  the  result  of  negligence  of  a  pre- 
scribed or  designated  period,  for  each  instance.  .  .Yen  1.00 

Request  for  certificates,  for  each  instance Yen      .50 

Request  for  copies  of  documents.  Yen  .10  for  one  leaf 
copy ;  in  the  case  of  foreign  documents,  Yen  .10  for 
every  100  words  and  fraction  thereof.  However, 
when  there  are  drawings  in  documents,  a  fee  is 
charged  with  regard  to  the  drawings  in  accordance 
with  the  provisions  for  preparation  of  drawings. 

Request  for  preparation  of  drawings  from  Yen  .30  to 
Yen  30.00  one  piece. 

Request  for  inspection  of  documents,  for  each  in- 
stance  Yen  .10 

Request  for  copying  documents,  for  each  instance,  Yen 
.25  for  every  hour  and  fraction  thereof, 


302  JAPAN 

Request  for  re-examination,  for  each  instance Yen    3.00 

Request  for  trial  or  trial  on  appeal,  for  each  instance.  .Yen  12.00 

Request  for  intervention,  for  each  instance Yen    3.00 

Request  for  determination  of  amount  of  costs,  for  each 

instance Yen    1.00 

Request  for  authentic  instruments  with  the  power  of 
execution  of  determination  of  costs  or  of  final  judg- 
ment with  reference  to  the  amount  of  compensa- 
tion, for  each  instance Yen  1.00 

Laws  in  Force   to  Prevent  the  Sale  or  Importation  of  Goods 
Bearing  a  False  Indication  of  Origin. 

There  are  no  laws  prohibiting  false  indications  of  origin  un- 
less they  involve  the  infringement  of  a  registered  trade  mark.  A 
trade  mark  bearing  a  false  indication  of  origin  cannot  be  regis- 
tered. If  the  false  indication  is  added  after  registration  the  regis- 
tration may  be  cancelled.  There  are  no  Regulations  prohibiting 
the  importation  of  goods  bearing  a  false  indication  of  origin ; 
but,  under  the  Customs  Regulations,  in  order  to  obtain  an  im- 
portation permit,  a  statement  is  required  including  information 
as  to  place  of  production  or  manufacture.  There  seems,  how- 
ever, to  be  no  definite  penalty  for  inaccurate  statements  as  to 
places  of  origin.  There  are  no  Regulations  requiring  the  mark- 
ing of  imported  goods  to  show  the  country  or  place  of  origin  or 
to  denote  that  they. are  foreign. 

Marking  Goods:  "Registered  Trade  Mark,"  written  in  Eng- 
lish and  Japanese. 

An  applicant  shall  designate  the  goods  on  which  his  trade 
mark  is  to  be  used  according  to  the  following  classification : 

CLASS  1. — Chemicals,"  Medicines  and  Articles  Accessory  to 
Medical  Treatment, — Acids,  salts,  alkalies,  bleaching  powder, 
resin,  glue,  phosphorus,  alcohol,  glycerine,  quinine,  morphine, 
tinctures,  syrups,  decoctions,  liquid  medicines,  infusions,  pills, 
plasters,  powders,  tablets,  electuaries,  raw  drugs,  medicinal  oils, 
essences  of  perfumes,  lime,  sulphur,  mineral  waters,  musk,  skin 
powder,  table  salt,  muxa,  anticeptics,  deodorizers,  insecticides, 
bandages,  gauze,  lint,  absorbent  cotton,  sponges,  oblates,  etc. 

CLASS  2. — Dyes,  Pigments,  Mordants  and  Preparations  for 
Lacquering  and  Varnishing, — Indigo  balls,  indigo,  purple  roots, 
beni,  vermillion,  minium,  mineral  green,  ultamarine,  Prussian 
blue,  white  lead,  chalk,  gold  and  silver  dust,  gamboge,  tooth  dyes, 
green  vitriol,  alum,  lacquer,  varnish,  paints,  shibu,  shoe-black, 
leather  oils,  anticorrosives,  water-proof  preparations,  etc. 

CLASS  3. — Perfumes,  Incense  and  those  Toilet  Articles  which 
do  not  belong  to  any  other  class, — Perfumed  waters,  perfumed 
oils,  face-powders,  hair-ointments,  scent-bags,  incense-sticks,  in- 
censes, face-lotions,  etc. 


JAPAN  303 

CLASS  4. — Soaps. 

CLASS  5. — Washing  and  Polishing  Preparations  which  do  not 
belong  to  any  other  class, — Washing-powder,  tooth-powder, 
washing-liquid,  polishing  liquid,  etc. 

CLASS  6. — Metals  and  Half-worked  Metals  which  do  not  be- 
long to  any  other  class, — Pig  iron,  wrought  iron,  steel,  bar  iron, 
tin  plates,  rails,  sheet  iron,  iron  wire,  copper,  sheet  copper,  cop- 
per wire,  lead,  sheet  lead,  zinc,  sheet  zinc,  tin,  aluminium,  nickel, 
mercury,  alloys,  etc. 

CLASS  7. — Manufactured  Metal  Goods  which  do  not  belong 
to  any  other  class, — castings,  forgings,  engravings,  net-works, 
etc. 

CLASS  8. — Edged  Tools  and  Sharp  Pointed  Tools, — Sickles, 
saws,  chisels,  drills,  cold  chisels,  hatchets,  axes,  knives,  razors, 
kitchen  knives,  planes,  files,  needles,  nails,  fire-hooks,  etc. 

CLASS  9. — Precious  Metals,  their  Imitations,  Aluminum  Gold, 
Nickel  Silver,  Britannia  Metal,  as  well  as  their  Manufactures 
and  Engravings  which  do  not  belong  to  any  other  class, — Gold, 
silver,  shibuichi,  shido,  other  alloys  of  precious  metals,  plated 
goods,  gold  and  silver  laces,  etc. 

CLASS  10. — Precious  Stones,  their  Imitations,  as  well  as  their 
Manufactures  and  Engravings  which  do  not  belong  to  any  other 
class, — Diamonds,  corals,  pearls,  agates,  quartz,  topaz,  emerald, 
etc. 

CLASS  11. — Minerals. 

CLASS  12.— Stones,  their  Imitations,  as  well  as  their  Manufac- 
tures which  do  not  belong  to  any  other  class. 

CLASS  13. — Mortar  and  Sand, — Mortar,  cement,  gypsum,  as- 
phalt, sand,  volcanic  ashes,  etc. 

CLASS  14. — Glazed  Earthen  Ware,  Porcelain,  Cloisonne  \Vare, 
Unglazed  Earthen  Ware,  Tiles  and  Bricks  which  do  not  belong 
to  any  other  class. 

CLASS  15. — r-Glass  and  those  Glass  Wares  and  Enameled  Goods 
which  do  not  belong  to  any  other  class, — Glass  panes,  glass  tubes, 
glass  bottles,  glass  balls,  etc. 

CLASS  1C. — India  Rubber  and  those  Manufactures  of  the  same 
which  do  not  belong  to  any  other  class. 

CLASS  17. — Machinery,  Implements  and  the  Parts  thereof, 
which  do  not  belong  to  any  other  class, — Boilers,  steam  engines, 
electric  generators,  electric  motors,  electric  transformers,  weav- 
ing machines,  spinning  jennies,  sewing  machines,  printing  ma- 
chines, water  raising  machines,  fire  extinguishers/ diving  ap- 
paratuses, belting,  etc. 

CLASS  18. — Scientific,  Medical,  Measuring,  Photographic  and 
Educational  Instruments  and  Tools,  Phonographs,  Spectacles. 
Calculating  Instruments,  and  Parts  thereof, — Telegraphic  in- 
struments, telephone  instruments,  electric  switches,  electric  bat- 
teries, test  tubes,  surgical  instruments,  measuring  and  weighing 


304  JAPAN 

instruments,  films,  drawing  instruments,  gymnastic  appliances, 
telescopes,  microscopes,  insulated  wires,  insulators,  carbon  for 
electric  instruments,  etc. 

CLASS  19. — Agricultural  and  Industrial  Tools  and  Instru- 
ments,— Ploughs,  spades,  hoes,  inakoki,  winnowing  fans,  har- 
rows, pick-axes,  etc. 

CLASS  20. — Carrying  Machines  and  Tools  and  Parts  thereof, — 
Wagons,  carriages,  jinrikisha,  automobiles,  bicycles,  perambu- 
lators, ships,  railway  cars,  wheels,  tyres,  etc. 

CLASS  21. — Time  Pieces  and  Accessory  Articles,  and  Parts 
thereof. 

CLASS  22. — Musical  Instruments. 

CLASS  23. — Guns,  Shot  and  Explosives, — Guns,  rifles,  fowling 
pieces,  pistols,  gun  powder,  gun  cotton,  dynamite,  percussion 
caps,  fire-works,  torpedoes  and  mines,  etc. 

CLASS  24. — Eggs  of  Silk-worms,  Eggs  of  Wild  Silk-worms, 
and  Cocoons. 

CLASS  25. — Floss  Silk,  Cotton,  Hemp,  Jute,  Feathers,  and 
Rough  Manufactures  thereof. 

CLASS  26.— Raw  Silk,  Silk  Thread,  Wild  Silk  Thread,  Koto 
Strings,  Gold  Thread  and  Silver  Thread. 

CLASS  27. — Cotton  Yarn. 

CLASS  28. — Woolen  Yarn. 

CLASS  29. — Hemp  Yarn  and  Thread  which  do  not  belong  to 
Classes  26  to  28,  inclusive. 

CLASS  30.— Silk  Cloths. 

CLASS  31. — Cotton  Cloths. 

CLASS  32. — Woolen  Cloths. 

CLASS  33. — Hemp  Cloths. 

CLASS  34. — Textiles  which  do  not  belong  to  Classes  30  to  33, 
inclusive. 

CLASS  35. — Knitworks,  Braids,  Twists,  Laces,  Ribbons,  etc., 
which  do  not  belong  to  any  other  class ;  Embroidery  and  Various 
Braided  Cords  which  do  not  belong  to  any  other  class. 

CLASS  36. — Clothing,  Handkerchiefs,  Buttons,  Ornamental 
Pins,  etc., — Clothes,  kammuri,  hats  and  caps,  collars,  cuffs, 
neckties,  eri,  under-shirts,  underdrawers,  gloves,  tabi,  handker- 
chiefs, tenugui,  towels,  fukusa,  furoshiki,  etc. 

CLASS  37. — Beddings  and  other  Room  Furnishings  which  do 
not  belong  to  any  other  class, — Bedsteads,  quilts,  pillows, 
mosquito  nets,  cushions,  screens,  gaku,  table  cloths,  curtains, 
floor  coverings,  etc. 

CLASS  38. — Sake.  \ 

CLASS  39. — Various  Liquors  which  do  not  belong  to  any  other 
class, — Wine,  beer,  brandy,  vermouth,  whisky,  mirin,  shirozake, 
shochu,  nigorisake,  kamenotoshi,  naoshi,  etc. 

CLASS  40. — Ice  and  Refreshing  Beverages, — Soda-water, 
orange  syrup,  lemonade,  cider,  etc. 


JAPAN  305 

.  CLASS  41. — Soy,  Sauces  and  Vinegar. 

CLASS  42. — Sugar  and  Honey, — White  sugar,  brown  sugar, 
crystallized  sugar,  rock  candy,  molasses,  honey,  etc. 

CLASS  43. — Confectionery  and  Bread, — Higwashi,  mushig- 
washi,  kakemono,  ame,  conserves,  etc. 

CLASS  44. — Tea,  Coffee,  Chocolate,  Lump  Sugar  containing 
Coffee,  etc. 

CLASS  45. — Food  Stuffs  and  Seasonings  which  do  not  belong 
to  any  other  class, — Meat,  extracts,  eggs,  katsubushi,  nori, 
kombu,  arame,  tsukudani,  tinned  provisions,  miso,  namemono, 
pickles,  pepper,  etc. 

CLASS  46. — Animal  milk,  Dairy  Products  and  Imitations 
thereof, — Condensed  milk,  cream,  cheese,  powdered  milk,  etc. 

CLASS  47. — Grains,  Vegetables,  Seeds,  Fruits,  Flour,  Starch, 
and  Manufactures  thereof, — Rice,  barley  and  wheat,  millet, 
sorghum,  hie,  bean,  mushrooms,  kampyo,  bulbs,  koji,  malt,  bak- 
ing powder,  yeast  powder,  wheat  flour,  arrow  root,  vermicelli, 
yuba,  konnyaku,  frozen  tofu,  frozen  konnyaku,  etc. 

CLASS  48. — Tobacco. 

CLASS  49. — Smoking  Apparatuses  and  Pouches, — Tobacco 
pipes,  tobacco  pouches,  pipe-cases,  peppermint  pipes,  pocket- 
books,  etc. 

CLASS  50. — Paper  and  Manufactures  thereof  which  do  not  be- 
long to  any  other  class,  Motoyui  and  Mizuhiki, — Japanese  paper, 
European  paper,  card-board,  imitation  leather,  wall  paper,  oil- 
paper, shibukami,  envelopes,  paper  cases,  ikkanbari,  blank  books, 
etc. 

CLASS  51. — Stationery, — Writing  brushes,  China  ink,  stamping 
ink,  material  for  stamps,  writing  ink,  printing  ink,  slate  pencils, 
pencils,  pens,  pen-holders,  suzuri,  inkstands,  paper  weights,  brush- 
stands,  pen-racks,  slates,  paper-fasteners,  pencil-sharpeners,  etc. 

CLASS  52. — Hides,  Leathers  and  Manufactures  thereof  which 
do  not  belong  to  any  other  class,  and  Bags  of  all  kinds, — Furs, 
leather,  harness,  letter-cases,  leather  belts,  catguts,  etc. 

CLASS  53. — Fuel, — Coal,  coke,  fire  wood,  charcoal,  tsukegi, 
pulverized  charcoal  for  pocket  stoves,  etc. 

CLASS  54. — Matches. 

CLASS  55. — Oils  and  Wax, — Petroleum,  vegetable  oil,  fish  oil, 
wax,  candles,  fats,  etc. 

CLASS  56. — Fertilizers, — Dried  sardine,  herring  refuse,  oil 
cake,  flesh-meal,  bone  dust,  blood-meal,  rice  bran,  phosphatic 
manures,  mixed  manures,  sulphate  of  ammonia,  etc. 

CLASS  57. — Wood,  Bamboo,  Barks,  Bamboo  Sheaths,  Wood 
Shavings,  etc. 

CLASS  58. — Articles  made  of  Wood,  Bamboo,  Rattan,  Barks, 
Bamboo  Sheaths,  their  Lacquer  Works  and  Gold  Lacquer  Works 
which  do  not  belong  to  any  other  class, — Joinery  works,  turned 
20 


306  JAPAN 

wares,  boxes  of  chip-wood,  basket  works,  braided  works,  pails 
and  tubs,  chip  braids,  etc. 

CLASS  59. — Tortoise  Shells,  Horns,  Husks,  Shells,  etc.,  Imi- 
tations thereof  which  do  not  belong  to  any  other  class,  and  Cellu- 
loid and  Manufactures  thereof  which  do  not  belong  to  any  other 
class. 

CLASS  60. — Straw,  Grass  and  Manufactures  thereof  which  do 
not  belong  to  any  other  class, — Wheat  straw,  rush  mats,  straw 
mats,  kasa,  ropes,  straw-braids,  etc. 

CLASS  61. — Umbrellas,  Canes,  Footgear  and  their  Accessories, 
—Japanese  umbrellas,  European  umbrellas,  canes,  shoes,  geta, 
zor\,  setta,  hanao,  tsumagake,  etc. 

CLASS  62. — Folding  Fans  and  Round  Fans. 

CLASS  63. — Lighting  Apparatuses  and  Parts  thereof, — Lamps, 
candlesticks,  lanterns,  electric  light  bulbs,  lamp  shades,  electric 
lamp  sockets,  filaments  for  electric  light,  gas  burners,  gas  man- 
tles, carbon  sticks  for  arc  light,  pocket  electric  lamps,  wicks,  etc. 

CLASS  64. — Brushes  and  False  Hairs. 

CLASS  65. — Toys,  Articles  for  Use  in  Sports  or  Games,  Arti- 
ficial Flowers,  hanakanzashi,  etc., — Balls,  go,  chess,  dolls,  tops, 
bows,  billiard  set,  oshiye,  playing  cards,  etc. 

CLASS  66. — Drawings  and  Pictures,  Picture  Albums,  Books, 
Newspapers,  Magazines,  etc. 

CLASS  67. — Merchandise  not  belonging  to  any  other  class. 

ARTICLE  XXI. — The  provisions  of  Articles  I  to  III,  inclusive, 
Articles  V  to  XXXIX,  inclusive,  Articles  XLVIII  to  LII,  in- 
clusive, Article  LVII,  Article  LX,  Article  LVII,  Article  LXVIII, 
Articles  LXX  to  LXXXV,  inclusive,  Articles  LXXXVII  to 
XC,  inclusive,  and  Article  XCIII  of  the  Regulations  for  the  En- 
forcement of  the  Patent  Law  are  applicable  mutatis  mutandis  to 
trade  marks. 

ARTICLE  XXII. — The  provisions  of  these  Regulations  are  ap- 
plicable mutatis  mutandis  to  marks  (hyosho). 

Japanese  Trade  Mark  Law. 

The  principle  of  the  superior  rights  of  the  prior  user  is  rec- 
ognized in  the  provision,  that  marks  identical  with  or  similar  to 
marks  belonging  to  another  person  and  well  known  to  the  pub- 
lic, and  which  are  used  on  identical  goods,  cannot  be  registered. 
The  further  provision  prohibiting  the  registration  of  marks  "cal- 
culated to  deceive  the  public"  under  which  many  fraudulent  reg- 
istrations have  been  cancelled  during  the  past  year  is  still  re- 
tained. 

In  general,  however,  the  legal  rights  relating  to  trade  marks 
are  held  to  arise  out  of  the  registration,  and  where  two  or  more 
persons  have  each  a  recognized  right,  the  first  registrant  will 
prevail. 

A  registration  made  may  be  cancelled  if  the  owner  does  not 


JAPAN  307 

use  his  trade  mark  within  the  empire  within  a  period  of  one  year 
from  the  time  of  its  registration  or  shall  cease  for  a  period  of 
three  years  to  use  it  in  Japan  unless  the  mark  be  one  that  has 
been  registered  as  a  foreign  registered  trade  mark. 

Under  the  old  law,  marks  the  same  as,  or  similar  to,  those 
used  by  another  before  July  1,  1899,  could  not  be  registered,  but, 
under  the  new  law,  several  persons  who  have  made  bona  fide  use 
of  identical  or  similar  marks  on  the  same  goods,  previous  to  the 
date  named,  may  each  register,  so  that  two  or  more  parties  may 
concurrently  use  the  same  registered  trade  mark. 

Another  important  improvement  in  the  present  law  is  that,  in 
a  case  of  prosecution  for  piracy  of  a  trade  mark,  it  will  not 
be  necessary  to  prove  that  the  defendant  knew  that  the  mark 
pirated  had  been  registered.  The  Patent  Bureau  will  give  notice 
through  an  official  journal  of  all  registered  marks  and  other 
matters  connected  therewith.  On  the  other  hand,  when  three 
years  have  elapsed  from  the  publication  of  a  trade  mark  in  the 
journal,  a  prosecution  cannot  be  based  upon  the  fact  that  the 
trade  mark  is  claimed  to  infringe. 

While  the  new  statute  on  the  whole  is  an  improvement  upon 
the  one  previously  in  force,  nevertheless  it  is  a  compromise  be- 
tween the  declarative  and  attributive  systems  of  trade  mark  reg- 
istration, between  the  system  which  on  the  one  hand  recognizes 
priority  of  use  and  that  on  the  other  hand  which  recognizes  pri- 
ority of  registration,  as  the  basis  of  trade  mark  rights. 

Protection  of  Unregistered  Trade  Marks. 

Under  the  new  trade  mark  law  of  Japan,  a  mark  is  forbidden 
registration,  which  is  identical  with,  or  similar  to  any  mark  al- 
ready known  to  the  public  and  employed  for  the  same  class  of 
goods  in  that  country.  This  provision  is  intended  to  put  a  stop, 
so  far  as  possible,  to  attempts  upon  the  part  of  applicants  to 
register  trade  marks  which  belong  to  others.  Under  this  clause, 
owners  of  trade  marks  known  in  the  country  but  not  yet  regis- 
tered may  oppose  an  attempt  to  register  their  trade  mark  by 
another.  It  is  possible  for  foreign  owners  of  trade  marks  to 
communicate  their  marks  to  the  Japanese  Patent  Office,  so  as  to 
give  notice  to  that  office  of  the  fact  that  the  marks  are  known  and 
used  in  Japan,  and  thereby  to  forestall  in  a  measure  the  attempt 
of  anyone  else  to  register  these  or  similar  marks.  The  Japanese 
Patent  Office  has  shown  its  evident  desire  to  protect  such  owners 
of  trade  marks  by  providing  a  form  in  which  such  information  may 
be  given,  to-wit :  in  a  communication  setting  forth  that  the  house 
has,  during  several  years,  used  its  marks  upon  the  Japanese 
market,  giving  the  date  when  for  the  first  time  the  mark  was 
introduced  into  Japan,  with  the  exhibits  proving  this  date,  names 
and  addresses  of  houses  with  whom  trade  has  been  conducted 
in  Japan,  a  statement  of  the  quantity  and  value  of  the  importa- 


308  JAPAN 

tions  yearly  into  Japan  and  any  other  evidence,  exhibits  or  com- 
mercial papers  to  prove  that  the  mark  is  well  known  in  that 
country.  At  the  same  time  the  director  of  the  Patent  Office 
advises,  as  the  proper  method  of  obtaining  protection  for  a  trade 
mark,  that  it  be  registered  under  the  law  rather  than  that  reli- 
ance be  put  upon  the  prevention  of  its  registration  by  any  other. 

The  provisions  of  this  law  appear  to  have  been  given  a  re- 
troactive effect.  Thus,  in  the  year  1903,  a  Japanese  registered 
as  his  own  trade  mark  "Monarch  of  the  Oaks."  An  attempt 
was  made  to  annul  the  mark,  but  it  was  claimed  that  under  Arti- 
cle 10  of  the  old  law,  under  which  it  was  registered  more  than 
three  years  having  elapsed  since  the  registration,  the  mark  could 
not  be  cancelled.  The  judge  held,  however,  that  the  foreign 
mark  was  well  known  since  1900  in  Japan  upon  goods  imported 
under  the  mark,  and  decided  that  the  mark  of  the  Japanese  should 
be  cancelled.  Like  decisions  appear  to  have  been  rendered  in 
favor  of  several  other  foreign  marks. 

We  quote  the  substance  of  a  communication  from  the  Director 
of  the  Japanese  Patent  Bureau,  relative  to  the  rejection  of  trade 
marks  applied  for,  when  the  marks  are  known  to  belong  to 
others  than  the  applicants,  or  to  resemble  the  marks  of  such 
other  person : 

"In  consequence  of  the  coming  into  operation  of  the  new 
Japanese  trade  mark  law  on  the  first  November,  a  mark 
known  to  the  public  to  belong  to  a  certain  person  now  re- 
ceives an  indirect  protection  under  Article  2  (5)  which 
prohibits  the  registration  of  marks  identical  with,  or  similar 
to  marks  belonging  to  another  person,  which  are  well  known 
to  the  public,  and  are  used  on  the  same  kinds  of  goods. 
While  the  advisability  of  obtaining  the  registration  of 
trade  marks  remains  -undiminished  under  the  new  law,  the 
owner  of  the  unregistered  trade  mark,  should  he  desire  to 
enjoy  the  benefit  of  the  provision  referred  to,  must  make  it 
clear  that  his  mark  is  well  known  to  the  public,  and  in  order 
to  establish  this  fact  it  is  not  sufficient  to  say  that  a  speci- 
men is  filed  at  the  Japanese  Patent  Office.  Accordingly, 
in  sending  specimens  of  unregistered  British  trade  marks 
to  that  office,  it  is  now  highly  desirable  to  state  where  and 
how  long  the  marks  have  been  used,  and  to  give  any  other 
particulars  which  establish  the  fact  that  they  are  well 
known  to  the  public."  (Trade  Marks  Journal,  March  2, 
1910,  p.  309.) 

From  this  it  is  evident  that  the  Japanese  government  is  doing 
all  that  it  can  reasonably  be  expected  to  do,  to  discourage  the 
practice  of  misappropriation  of  trade  marks  by  unscrupulous 
traders.  No  doubt  much  of  the  agitation  over  the  infringement 
of  marks  in  Japan,  and  much  of  the  reproach  which  has  been 


JAPAN  309 

heaped  upon  this  country,  arises  from  matters  which  the  govern- 
ment was  powerless  to  prevent,  in  view  of  the  neglect  of  the 
rightful  owners  of  the  marks  themselves  to  register  their  marks, 
as  provided  by  the  law.  When,  through  such  neglect,  the  mark 
is  misappropriated  by  an  unscrupulous  trader,  the  owner  thereof 
suffers  no  more  than  the  usual  and  appropriate  penalty  of  his 
own  neglect. 

_  It  is  probable  that  manufacturers  whose  trade  marks  are  in- 
fringed upon  experience  sufficient  difficulty  in  effecting  the  pun- 
ishment of  the  infringer,  even  under  the  most  favorable  circum- 
stances, a  condition  which  makes  it  all  the  more  important  that 
they  should  omit  no  step  that  may  assist  their  efforts  in  this  di- 
rection. Efforts  to  prosecute  the  inf ringers,  have,  it  is  said,  to 
a  great  extent,  failed,  owing  to  the  peculiar  views  of  the  Japanese 
law  officials,  that  one  case  of  infringement  is  not  sufficient  evi- 
dence of  violation  of  a  trade  mark.  It  seems  that  according  to 
the  Japanese  view,  there  must  be  proof  of  continuous  violation 
and  repeated  sales  of  the  offending  goods  before  a  conviction 
can  be  had  of  the  party  offending.  A  single  sale  of  infringing 
goods  and  its  subsequent  production  in  evidence  before  the  court, 
is  said  to  be  insufficient  to  procure  the  conviction  of  the  offender. 

Decisions. 

The  status  of  the  "Black  and  White"  whiskey  trade  mark  which 
has  been  the  subject  of  litigation  before  the  Japanese  courts  has 
reached  a  new  and  more  gratifying  phase  in  a  recent  decision 
of  the  Japanese  Patent  Office,  which  holds  that  the  trade  mark 
registered  by  the  Japanese  merchant,  and  which  appears  to  be 
that  for  the  use  of  which  he  was  prosecuted,  is  void.  Its  can- 
cellation was  decreed.  The  trade  mark  of  Buchanan  &  Co.,  as 
registered  in  Japan,  consisted  of  the  words  ''Scotch  Whiskey, 
Black  and  White,  Specially  Selected  for  the  House  of  Commons," 
followed  by  the  name  and  address  of  the  company.  The  trade 
mark  afterward  registered  by  the  Japanese  infringer  showed  the 
same  words,  except  that  they  were  prefixed  by  the  word  "Old" 
and  followed  by  the  name  and  address  of  the  Japanese  registrant, 
while  in  the  middle  of  the  label  was  the  representation  of  a  bird 
with  outspread  wings  within  a  circle  and  a  lion  rampant  on  either 
side  of  the  circle.  The  defendant  claimed  that  this  figure  or 
emblem  was  sufficiently  conspicuous  to  make  his  label  easily  dis- 
tinguishable from  that  of  Buchanan  &  Co.  The  Patent  Office 
said,  however,  that  on  the  whole  it  was  evident  that  they  were 
made  from  the  same  design,  were  identical  in  their  prominent 
features,  and  could  easily  be  mistaken  at  a  distance  one  for  the 
other.  Accordingly,  the  cancellation  of  the  latter  mark  was 
decreed. 

This  decision  gives  point  to  the  statement  contained  in  a  letter 


3io  JAPAN 

of  the  President  of  the  Chamber  of  Foreign  Commerce  at  Yoko- 
hama as  to  the  best  way  of  obtaining  protection  in  Japan  against 
trade  mark  inf ringers.  In  cases  where  both  marks  are  regis- 
tered, he  advises  that  it  is  preferable  to  start  a  proceeding  in  the 
Patent  Office  rather  than  before  the  ordinary  courts.  The  de- 
cision of  the  Patent  Office  is  followed  by  the  courts  upon  the 
question  of  resemblance  between  the  marks  when  compared  one 
with  the  other,  or  upon  any  other  point  litigated  between  the 
parties.  The  proceeding  in  the  Patent  Office  establishes,  there- 
fore, both  the  right  to  the  mark  and  the  fact  of  infringement, 
and  furnishes  the  basis  for  a  criminal  or  civil  action  afterward,  if 
the  evidence  produced  will  warrant  it. 

Interfering  Marks. 

The  Japanese  Patent  Office  has  rendered  a  decision  of  some 
interest  on  appeal  from  the  examiners,  on  the  question  of  regis- 
trability  of  a  trade  mark.  The  mark  was  objected  to  by  the  ex- 
aminers upon  the  ground  that  it  was  liable  to  confusion  with 
one  previously  registered.  The  marks  had  in  common  the  rep- 
resentation of  the  bust  of  a  woman,  but  the  one  registered  was 
represented  in  a  small  frame  in  the  shape  of  a  shield,  with  the 
face  turned  toward  the  left,  while  the  other  showed  the  head  of 
a  woman,  turned  in  the  opposite  direction,  in  the  act  of  inhaling 
a  flower  held  in  her  hand,  and  accompanied  by  the  name  "Divi- 
nia"  and  various  decorative  features.  It  was  claimed  by  the 
applicant  that  in  view  of  the  difference  in  appearance  between 
the  marks,  and  particularly  in  view  of  the  applicant's  use  of  the 
name  "Divinia,"  which  gave  to  his  mark  a  distinctive  appella- 
tion, there  was  no  liability  to  confusion  between  the  two.  The 
examiners  held  to  the  contrary,  but  their  decision  was  reversed, 
it  being  held  that  the  mere  presence  of  the  representation  of  the 
head  of  a  woman  in  the  two  marks,  did  not  give  them  such  re- 
semblance as  would  cause  liability  to  confusion.  (La  Prop.  Ind., 
1908,  p.  102.) 

Conflicting  Trade  Marks. 

If  a  trade  mark  resembles  another  already  registered  in  the 
bureau  of  trade  marks,  the  latter  trade  mark  will  not  be  granted 
registration.  (Trade  Marks  Law,  Art.  2)  ;  and  even  if  the  ap- 
plication were  allowed,  the  registration  could  be  avoided  upon 
the  suit  of  the  prior  registrant.  (Id.,  Art.  10.) 

The  use  of  the  trade  mark  cancelled  will  then  become  illegal, 
and  persistence  in  its  use  gives  rise  to  liability  to  suit  for  dam- 
ages and  criminal  prosecution.  (Id.,  Art.  16.)  Moreover,  in 
some  cases,  the  goods  wrongfully  marked  may  be  destroyed  by 
the  authority  of  the  government.  (Id.,  Art.  18.) 

If  a  trade  mark  has  not  been  registered,  but  has  been  used  by 
the  owner  since  prior  to  July,  1899,  a  trade  mark  similar  thereto 


JAPAN  311 

may  not  be  registered.  (Id.,  Art.  2,  Sec.  5.)  A  mark  wrong- 
fully registered,  in  violation  of  this  section,  may  be  annulled  at 
the  suit  of  the  party  aggrieved. 

Infringement  of  trade  mark  rights  arises  when  the  same  or  a 
similar  trade  mark  is  used  upon  the  same  goods  as  those  to 
which  the  former  mark  is  applied.  The  use  of  the  same  mark 
upon  different  goods  constitutes  no  infringement.  For  instance, 
a  man  may  use  for  wine  a  trade  mark  similar  to  that  used  by 
another  for  tobacco. 

The  tests  whereby  one  can  judge  whether  trade  mark  rights 
have  been  infringed  upon  are  similiarity,  first,  in  appearance; 
second,  in  sound;  third,  in  meaning.  The  following  decisions 
in  cases  of  contested  registrations  are  illustrative  of  the  manner 
in  which  these  principles  are  applied  by  the  Japanese  trade  mark 
registration  bureau  and  by  the  courts. 

Application  having  been  made  for  the  registration  for  a  mark 
for  soap,  consisting  of  two  dragons,  on  either  side  of  a  horse's 
head,  bridled  and  facing  to  the  right,  registration  was  refused 
because  of  an  earlier  mark  for  the  same  goods  consisting  of  a 
horse's  head,  unbridled,  within  a  horse  shoe,  and  facing  in  the 
opposite  direction.  This  ruling  was  reversed  by  the  court,  which 
held  that  the  differences  were  such  as  completely  to  differentiate 
the  two  marks. 

The  owner  of  a  registered  mark  brought  suit  against  a  later 
registrant  for  infringement.  The  marks  consisted  of  two  Japa- 
nese words.  The  court  held  with  the  plaintiff  on  the  ground  of 
similarity  in  the  meaning  of  the  two  words,  and  general  re- 
semblance in  appearance,  which,  combined,  were  calculated  to 
mislead  and  deceive  the  public. 

The  decision  of  the  Patent  Office,  rejecting  a  trade  mark  ap- 
plication which  had,  in  common  with  an  earlier  registration,  as  a 
prominent  feature,  the  representation  of  the  god  of  blessing,  rid- 
ing on  a  soaring  stork,  was  sustained  on  appeal  to  the  court. 
The  latter  tribunal  held  that  the  distinctive  features  in  the  two 
marks,  scrolls  and  pine  trees,  were  of  minor  importance  and  in- 
sufficient to  differentiate  the  marks. 

In  a  suit  between  the  registrants  of  two  trade  marks  for 
matches,  displaying  as  prominent  features  the  same  style  of  rep- 
resenting the  words  "Best  Match,"  the  court  held  the  action  of  the 
plaintiff  well  founded. 

The  Japanese  Patent  Office,  under  date  of  August  16,  1904, 
decided  a  curious  case  involving  the  validity  of  a  trade  mark 
registered  in  that  country. 

The  trade  mark  consisted  of  the  letters  "D.  R.  G.  M."  It 
appeared  that  these  letters  were  in  common  usage  in  Germany 
as  an  abbreviation  of  the  words  "Deutsche  Reichsgebrauchs- 
muster,"  or  "German  Design  Patent,"  which  signified  that  the 
article  to  which  the  letters  are  attached  is  the  subject  of  a  design 
patent  of  the  German  Empire. 


312  LEEWARD  ISLANDS 

Held,  by  the  Japanese  Patent  Office,  that  in  view  of  the  familiar 
meaning  of  the  German  abbreviation,  its  use  as  a  trade  mark  was 
calculated  to  convey  the  false  impression  that  the  articles  to 
which  it  was  attached  were  protected  by  a  German  design  patent. 
It  therefore  declared  the  registration  invalid.  (China  Import, 
Export  and  Bank  Co.  vs.  Sumi  Rikichi,  Blatt  fur  Patent,  Muster- 
und  Zeichenwesen,  1905,  p.  15.) 

Trade  Mark  Infringement. 

The  difficulty  which  existed  under  the  old  law  of  Japan  in 
prosecuting  infringers  has  been,  to  some  extent,  removed.  Four 
counterfeiters,  whose  acts  had  been  discovered  and  against  whom 
suit  was  brought  as  a  means  of  settling,  executed  the  following 
confession,  indicating  thereby  their  wholesome  dread  of  the  pen- 
alties which  the  law  might  otherwise  inflict  upon  them : 

"We  the  undersigned,  knowing  that  the  copper  paint  of 
the  Woolsey  Paint  Color  Company  of  the  United  States 
(generally  known  under  the  name  of  dock  paint)  enjoys  a 
good  reputation  and  is  very  much  appreciated  by  the  con- 
sumers, have  imitated  the  trade  mark  of  the  paint,  the  woman 
and  dragon,  and  have  applied  this  mark  to  an  inferior  arti- 
cle, and  have  sold  the  same.  This  fact  was  discovered  and 
we  were  enjoined  from  continuing  these  acts  and  prosecuted 
therefor;  but  with  great  generosity  you  have  waived  the 
prosecution  therefor ;  for  which  we  are  very  grateful.  We 
pray  you  to  be  so  good  as  to  excuse  our  misconduct  and  we 
swear  that  in  the  future  we  will  not  be  guilty  of  any  similar 
wrong. 

"All  the  counterfeit  marks  found  in  our  possession  have 
been  destroyed."  (La  Prop.  Ind.,  1911,  p.  15.) 


LEEWARD  ISLANDS 

The  total  population  in  1911  was  estimated  at  141,000.  The 
administration  consists  of  a  Governor,  an  Executive  Council  ap- 
pointed by  the  Crown ;  also  a  Legislative  Council  appointed  by 
the  Crown. 

MONEY,  WEIGHTS  AND  MEASURES — Same  as  Great  Britain. 

Laws. 
Act  No.  33  of  1887,  No.  17  of  1890  and  August  10,  1895. 


LEEWARD  ISLANDS  313 

Duration. 

Fourteen  years ;  renewable. 

1.  At  a  time  not  being  less  than  two  months  nor  more  than 
three  months  before  expiration  of  fourteen  years  from  the  date 
of  registration  of  a  trade  mark,  the  Registrar  shall  send  notice 
to  the  registered  proprietor  that  the  trade  mark  will  be  removed 
from  the  register  unless  the  proprietor  pays  to  the  Registrar 
before  the  expiration  of  such  fourteen  years  (naming  the  date 
at  which  the  same  will  expire)  the  prescribed  fee;  and  if  such 
fee  be  not  previously  paid,  he  shall  at  the  expiration  of  one 
month  from  the  date  of  the  giving  of  the  first  notice  send  a  sec- 
ond notice  to  the  same  effect. 

2.  If   such   fee  be  not  paid   before  the  expiration  of  such 
fourteen  years  the  Registrar  may  after  the  end  of  three  months 
from  the  expiration  of  such  fourteen  years  remove  the  mark  from 
the  register,  and  so  from  time  to  time  at  the  expiration  of  every 
period  of  fourteen  years.     (Art.  20.) 

What  May  Be  Registered. 

(a)  A  name  of  an  individual  or  firm  printed,  impressed,  or 
woven  in  some  particular  and  distinctive  manner;  or 

(b)  A  written  signature  or  copy  of  a  written  signature  of 
the  individual  or  firm  applying  for  registration  thereof  as  a  trade 
mark;  or 

(c)  A    distinctive   device,    mark,   brand,   heading,    label,    or 
ticket;  or 

(d)  An  invented  word  or  invented  words;  or 

(e)  A  word  or  words  having  no  reference  to  the  character 
or  quality  of  the  goods,  and  not  being  a  geographical  name. 

(2)  There  may  be  added  to  any  one  or  more  of  the  essential 
particulars  mentioned  in  this  section  any  letters,  words  or  fig- 
ures, or  combination  of  letters,  words  or  figures,  or  any  of  them, 
but  the  applicant  for  registration  of  any  such  additional  matter 
must  state  in  his  application  the  essential  particulars  of  the  trade 
mark,  and  must  disclaim  in  his  application  any  right  to  the  ex- 
clusive use  of  the  added  matter,  and  a  copy  of  the  statement  and 
disclaimer  shall  be  entered  on  the  register. 

(3)  Provided  as  follows: 

A  person  need  not  under  this  section  disclaim  his  own  name  or 
the  foreign  equivalent  thereof,  or  his  place  of  business,  but  no 
entry  of  any  such  name  shall  affect  the  right  of  any  owner  of  the 
same  name  to  use  that  name  or  the  foreign  equivalent  thereof. 
(Art.  4.) 

Mode  of  Application. 

Any  person,  whether  a  British  subject  or  an  alien,  desiring  to 
register  a  trade  mark  shall  apply  to  the  Registrar  by  sending  to 

9 


314  LEEWARD  ISLANDS 

him  a  statement  accompanied  by  such  declaration  as  is  herein- 
after mentioned  and  the  prescribed  fee.     (Art.  5.) 
The  statement  shall  contain  the  following-  particulars : 

A.  The  name  and  address  and  calling  of  the  applicant;  and 

B.  The  description  or  reference  to  a  description  of  the  trade 
mark  to  be  registered ;  and 

C.  The  class  or  classes  of  goods,  being  some  one  or  more  of 
the  classes  mentioned  in  the  first  schedule,  and  the  particular  de- 
scription or  descriptions  of  goods  in  such  class  or  classes,  with 
respect  to  which  he  desires  the  trade  mark  to  be  registered;  and 

D.  In  the  case  of  a  trade  mark  already  in  use  a  description 
of  the  goods  in  respect  of  which  it  has  been  used  and  the  length 
of  time  during  which  it  has  been  so  used.     (Art.  6.) 

The  above  statement  must  bear  a  date  and  be  signed  by  the 
applicant.  Subject  to  any  other  directions  that  may  be  given 
by  the  Registrar,  the  statement  sent  to  the  Registrar  shall  be 
upon  foolscap  paper,  of  a  size  of  thirteen  inches  by  eight  inches, 
and  shall  have  on  the  left-hand  part  thereof  a  margin  of  not  less 
than  one  inch  and  a  half.  (Art.  7.) 

Subject  to  any  other  directions  that  may  be  given  by  the 
Registrar,  a  description  of  a  trade  mark  shall  be  given  in  writing 
and  shall  be  accompanied,  when  practicable,  by  a  drawing  or 
other  representation  in  duplicate,  not  less  than  three  inches 
square,  on  foolscap  paper  of  the  size  aforesaid,  or  by  a  specimen 
of  the  trade  mark  pasted,  or  otherwise  fastened,  on  such  paper. 
When  a  drawing  or  other  representation  or  specimen  cannot  be 
given  in  a  manner  aforesaid,  a  specimen  or  copy  of  the  trade 
mark  may  be  sent,  either  of  full  size,  or  on  a  reduced  scale,  and 
in  such  form  as  may  be  thought  most  convenient. 

The  Registrar  may,  if  dissatisfied  with  the  representation  of 
a  trade  mark,  require  -a  fresh  representation,  either  before  he 
proceeds  with  the  application,  or  before  he  registers  the  trade 
mark. 

The  Registrar  may  also,  in  exceptional  cases,  deposit  in  such 
place  as  the  Governor  shall  direct  a  specimen  or  copy  of  a  trade 
mark  which  cannot  conveniently  be  placed  on  his  register,  and 
may  refer  thereto  in  his  register  in  such  manner  as  he  thinks 
advisable.  (Art.  8.) 

Where  an  application  for  the  registration  of  a  trade  mark  is 
made  by  or  on  behalf  of  a  corporate  or  quasi-corporate  body  of 
persons,  the  statement  and  declaration  shall  be  made  by  the  Sec- 
retary or  other  principal  officer  of  the  body  of  persons ;  and  the 
Registrar  may  require  such  proof  as  he  thinks  fit  that  the  appli- 
cation made  is  duly  authorized  by  such  body  of  persons. 
(Art.  10.) 

As  soon  as  may  be  after  the  receipt  of  an  application  made  as 
provided  by  these  rules,  the  Registrar  shall  forward  the  same  or 
a  copy  thereof  to  the  Colonial  Secretary  for  advertisement  in  the 


LIBERIA 


315 


Leeward  Islands  Gazette  and  shall  require  the  applicant  to  in- 
sert an  advertisement  thereof  in  some  local  newspaper  during 
such  time  and  in  such  form  and  generally  in  such  manner  as  the 
Registrar  may  think  desirable,  and  stating  the  length  of  time 
during  which  the  mark  has  been  used.  (Art.  12.) 

For  the  purposes  of  such  advertisement,  the  applicant  may  be 
required  to  furnish  a  woodblock  or  electrotype  of  the  trade  mark 
of  such  dimensions  as  may  from  time  to  time  be  directed  by  the 
Registrar,  or  such  other  information  or  means  of  advertising  the 
trade  mark  as  may  be  allowed  by  the  Registrar.  (Art.  13.) 

On  the  expiration  of  the  three  months  from  the  date  of  the 
first  appearance  of  the  advertisement  in  the  Leeward  Islands 
Gazette  the  Registrar  may,  if  he  is  satisfied  that  the  applicant 
is  entitled  to  registration,  register  the  trade  mark  in  respect  of 
the  description  of  goods  for  which  he  may  be  entitled  to  be  reg- 
istered, and  the  applicant  as  the  proprietor  thereof,  on  payment 
of  the  prescribed  fee.  (Art.  15.) 

Upon  registering  any  trade  mark  the  Registrar  shall  enter  in 
the  register  the  date  on  which  the  statement  relating  to  the  ap- 
plication for  registration  was  received  by  the  Registrar  (which 
day  shall  be  deemed  to  be  the  date  of  the  registration)  and  such 
other  particulars  as  he  may  think  necessary,  including  the  name 
and  address  of  the  proprietor.  (Art.  16.) 

Opposition. 

A  notice  of  opposition  may  be  given  by  sending  to  the  Reg- 
istrar, together  with  the  prescribed  fee,  a  written  notice  in  dupli- 
cate, on  foolscap  paper  of  such  size  as  aforesaid,  stating  the 
grounds  of  the  opposition.  The  applicant's  counter-statement 
in  duplicate  shall  also  be  written  on  foolscap  paper  of  such  size 
as  aforesaid.  (Art.  14.) 

Assignment. 

A  trade  mark,  when  registered,  shall  be  assigned  and  trans- 
mitted, only  in  connection  with  the  good  will  of  the  business 
concerned  in  the  particular  goods  or  classes  of  goods  for  which 
it  has  been  registered,  and  shall  be  determinable  with  that  good- 
will. (Art.  11.) 

Fees. 

On  application,  £1 ;  on  completion,  £1. 

Classification. 
Same  as  British. 


LIBERIA 

Liberia  is  a  free  and  independent  negro  Republic  of  Western 
Africa.  In  point  of  situation  it  occupies  the  Grain  or  Pepper 
Coast  of  Northern  Guinea,  and  comprises  an  area  of  about 
45,000  square  miles.  It  has  about  350  miles  of  coast  line  and 


316  LUXEMBOURG 

stretches  inland  to  an  average  of  150  miles.  The  population  in 
1911  was  estimated  at  2,200,000.  The  principal  imports  are 
cotton  goods,  etc. 

MONEY— One  dollar  (100  cents)=4s.  2d.=$1.00  United 
States. 

WEIGHTS  AND  MEASURES — Same  as  Great  Britain. 

Laws. 

December  22,  1864,  and  February  1,  1900. 

It  is  enacted  by  the  Senate  and  House  of  Representatives  of 
the  Republic  of  Liberia  in  Legislature  assembled. 

Sec.  1.  That  from  and  after  the  passage  of  this  Act,  any 
person,  whether  Liberian  citizen  or  foreigner,  shall  have  the 
privilege  of  registering  a  "Trade  Mark"  or  "Trade  Marks"  un- 
der the  sanction  and  protection  covering  the  granting  of  Letters 
Patent  of  said  Act  of  1864;  the  applicant  in  all  cases  furnishing 
the  Department  with  a  clear,  concise  description  of  such  trade 
mark,  together  with  an  accurate  drawing  of  the  design  to  be  reg- 
istered. 

Sec.  2.  It  is  further  enacted  that  the  fee  for  registering  a 
trade  mark  under  this  Act  shall  be  ten  dollars. 

Any  law  to  the  contrary  notwithstanding. 

Approved  February  1,  1900. 

Requirements. 

Power  of  attorney;  description  of  the  goods  and  five  copies 
of  the  Mark.  (Form  for  application  may  be  obtained  from  B. 
Singer's  Offices.) 

Assignment. 

Assignments  must  be  recorded  in  the  Office  of  the  Secretary 
of  State  within  one  year  from  date  of  execution  thereof. 

Infringement  Suits. 

All  suits,  controversies  and  cases  arising  under  this  Act  shall 
be  cognizable,  as  well  in  equity  as  at  law,  by  the  Supreme  Court 
of  the  Republic  of  Liberia. 


LUXEMBOURG 

The  area  of  the  Grand  Duchy  of  Luxembourg  is  about  1,000 
square  miles.  The  population  in  1911  was  estimated  at  246,000. 
Luxembourg  belongs  to  the  German  Zollverein. 

The  manufacture  of  leather  gloves  is  one  of  the  chief  indus- 
tries of  Luxembourg.  The  materials — lamb  and  kid  skins — are 
imported  from  all  parts  of  the  world.  Mining  and  smelting  are 
also  very  important  industries. 


LUXEMBOURG  317 

MONEY,  WEIGHTS  AND  MEASURES — Same  as  Germany. 

Laws. 
March  28,  1883.     Decree  of  May  30,  1883. 

Duration. 

Ten  years;  renewable.     (Art.  7.) 

Foreign  trade  marks  are  protected  only  so  long-  as  they  are 
protected  in  the  country  of  origin.  (Art.  9.) 

Who  May  Apply.. 

The  first  user  of  the  mark  is  alone  entitled  to  registration. 
No  one  can  claim  an  exclusive  right  to  a  mark  until  he  has  de- 
posited it  for  registration. 

Foreigners  who  have  industrial  or  commercial  establishments 
in  Luxembourg  are  entitled  to  the  benefit  of  the  law.  Any  per- 
son engaged  in  industry  or  commerce  in  another  country  which, 
by  international  convention,  accords  reciprocity  to  Luxembourg 
marks,  may  have  the  benefit  of  the  law  so  long  as  his  mark  is 
protected,  in  his  own  country.  (Art.  9.) 

What  May  Be  Registered. 

Any  mark  serving  to  distinguish  the  products  of  an  industry 
or  articles  of  trade  is  considered  a  trade  mark. 

The  name  of  a  person  or  of  a  firm  in  the  distinctive  form  given 
it  by  the  party  interested  may  serve  as  a  mark.  (Art.  1.) 

Mode  of  Application  and  Requirements. 

The  application  should  be  made  in  person  or  by  representa- 
tive. It  must  be  accompanied  by  a  receipt  for  the  payment  of 
the  tax;  two  specimens  of  his  mark  on  detached  cardboard,  not 
to  exceed  8  x  10  centimeters;  a  block  (cliche),  not  to  exceed  the 
above  dimensions  of  metal  in  high  relief  (the  lettering  may  be 
in  intaglio  but  must  be  clear  cut)  ;  a  brief  description  in  French 
or  German  with  a  statement  as  to  whether  it  is  raised  upon  or 
impressed  into  the  goods,  and  whether  the  mark  has  been  re- 
duced in  order  not  to  exceed  the  required  dimensions.  This  de- 
scription must  be  signed  by  the  applicant.  (Art.  3.) 

No  one  can  lay  claim  to  the  exclusive  use  of  a  mark  if  he 
has  not  deposited  a  specimen  in  duplicate  and  a  typographical 
block  in  the  hands  of  the  officer  designated  by  the  Government. 
(Art.  2.) 

Assignments. 

Trade  marks  cannot  be  transferred  except  with  the  transfer 
of  the  business.  All  transfers  between  living  persons  must  be 


318  MALTA  AND  Gozo 

recorded.     Unless  recorded,  a  transfer  is  without  effect  as  to 
third  parties.     (Art.  10.) 

Fees. 

For  registration,  10  francs ;  for  assignment,  F.  1.70. 
Infringement  and  Penalties. 

Counterfeiting  and  fraudulent  use  or  sale  are  punishable  by 
fine  (26  to  2,000  francs)  or  imprisonment  (eight  days  to  six 
months),  or  both.  (Art.  14.) 


MALTA  AND  GOZO 

Malta  is  a  British  Colony  and  is  the  principal  of  a  small  group 
of  islands  in  the  Mediterranean,  consisting  of  Malta,  Gozo  and 
Comino. 

The  area  of  the  Island  of  Malta,  inclusive  of  Gozo,  is  117 
square  miles.  The  length  is  about  17  miles  and  its  breadth 
about  9  miles.  The  population  in  1911  was  estimated  to  be 
216,000. 

The  principal  products  of  the  island  are  potatoes,  fruit,  corn 
and  some  cotton,  which  are  exported  principally  to  Great  Brit- 
ain. The  port  of  Valetta  is  a  vast  entrepot  for  coals,  which  are 
forwarded  thence  to  the  Mediterranean  and  Eastern  ports. 

MONEY — Same  as  Great  Britain. 

WEIGHTS  AND  MEASURES — Maltese  Cafriso=4^  Imp.  Galls. 
salma=l  Imp.  quarter;  cantar=175  Ibs.  avoirdupois;  rotolo= 
1.745  Ibs.  avoirdupois. 

Laws. 
Ordinance  No.  11  of  1899.     Regulations  of  October,  1902. 

Term. 
Fourteen  years;  renewable. 

What  May  Be  Registered. 

Marks  intended  to  distinguish  the  produce  of  any  industry  or 
articles  of  trade  are  considered  to  be  trade  marks,  provided  they 
contain  at  least  one  of  the  following  particulars : 

1.  A  name  of  an  individual  or  a  firm  or  a  commercial  part- 
nership, printed,  impressed,  or  woven,  in  some  particular  and 
distinctive  manner, 


MALTA  AND  Gozo 

2.  ^  A  written  signature  or  copy  of  a  written  signature  of  the 
individual  applying  for  registration  thereof  as  a  trade  mark. 

3.  A  distinctive  device,  mark,  brand,   heading,  label,  ticket, 
or  fancy  word  or  words  not  in  common  use.     (Art.  72.) 

The  marks  and  words  referred  to  in  the  preceding  article 
must  be  different  from  those  already  legally  used  by  other 
persons. 

Any  words  or  figures,  or  a  combination  of  words  and  figures, 
may,  however,  in  a  trade  mark,  be  added  to  one  or  more  of  the 
particulars  indicated  in  the  first  paragraph  of  this  article 
(Art.  73.) 

Mode  of  Application. 

Whoever  is  willing  to  secure  for  himself  the  exclusive  use  of 
any  trade  mark,  shall  present  an  application  to  the  Comptroller 
accompanied  by: 

1.  Two  representations  of  the  trade  mark. 

2.  A  declaration,  in  duplicate,  stating  the  kind  of  articles  to 
which  it  is  intended  to  affix  the  mark,  and  stating  whether  the 
mark  is  to  be  affixed  to  articles  produced  by  the  declarant,  or  to 
goods  of  his  trade. 

3.  A  description,  in  duplicate,  of  the  mark. 

4.  A    receipt   or    a    declaration    from    the    Receiver-General 
showing  the  payment  of  the  fee  for  registration  of  trade  marks. 
(Art.  75.) 

Notice  of  Application  to  Be  Published. 

A  notice  of  application  for  registration  of  a  trade  mark  shall, 
as  soon  as  possible,  be  given  by  the  Comptroller  in  the  Govern- 
ment Gazette  and  in  two  other  periodical  newspapers.  (Art.  79.) 

Requirements. 

Two  prints ;  declaration  in  duplicate ;  description  in  duplicate ; 
block  or  electrotype  of  the  trade  mark,  of  such  dimensions  as 
may  from  time  to  time  be  directed  by  the  Comptroller,  or  with 
such  other  information  or  means  of  advertising  the  trade  mark 
as  may  be  required  by  the  Comptroller;  and  the  Comptroller,  if 
dissatisfied  with  the  block  or  electrotype  furnished  by  the  appli- 
cant, may  require  a  fresh  block  or  electrotype  before  proceeding 
with  the  advertisement. 

When  an  application  relates  to  a  series  of  trade  marks  differ- 
ing from  one  another  in  respect  of  the  particulars  mentioned  in 
Article  83  of  Ordinance  No.  11  of  1899,  the  applicant  may  be 
required  to  furnish  a  block  or  electrotype  (or  more  than  one  if 
necessary)  of  any  or  of  each  of  the  trade  marks  constituting  the 
series ;  a'nd  the  Comptroller  may,  if  he  thinks  fit,  insert  with  the 


MALTA  AND  Gozo 

advertisement  of  the  application  a  statement  of  the  manner  in 
respect  of  which  the  several  trade  marks  differ  from  one  another. 

The  blocks  or  electrotypes  furnished  must  correspond  exactly 
with  the  representations,  must  afford  perfectly  distinct  impres- 
sions of  the  marks,  and  must  be.  upon  a  scale  sufficiently  large  to 
reproduce  the  marks  faithfully;  worn  or  mutilated  blocks  or  elec- 
trotypes will  not  be  accepted. 

The  largest  space  available  for  the  insertion  of  any  single 
block  or  electrotype  is  seven  inches  broad  by  ten  inches  deep. 

When  a  block  or  electrotype  exceeds  two  inches  in  depth  or 
breadth,  a  charge  for  additional  space  will  be  made,  at  the  rate 
of  two  shillings  for  every  inch  or  part  of  an  inch  in  depth  or 
breadth  beyond  the  two  inches. 

The  blocks  or  electrotypes  supplied  for  the  advertisement  of 
trade  marks  cannot  in  any  case  be  returned  to  applicant. 

(Farms  of  application  may  be  obtained  from  B.  Singer's 
Offices.) 

Opposition  to  Application. 

Any  person  may,  within  two  months  from  the  publication  of 
the  notice  referred  to  in  the  preceding  article,  present  to  the 
Comptroller,  in  duplicate,  an  act  of  opposition  to  the  said  appli- 
cation, and  one  copy  of  the  act  of  opposition  shall  be  sent  to 
the  applicant  with  an  intimation  that  he  may  send,  in  duplicate, 
a  statement  of  the  grounds  against  the  opposition. 

If  the  applicant  does  not  send  such  statement,  his  application 
shall  be  considered  as  abandoned ;  but,  if  he  sends  that  state- 
ment, it  shall  be  communicated  to  the  person  who  made  the  oppo- 
sition. 

Such  opposition  shall  be  considered  as  withdrawn  if  the  per- 
son who  made  it  shall  not,  by  citation,  demand  in  the  competent 
civil  court  that  registration  be  not  granted,  and  shall  not,  on 
filing  the  citation,  give  sufficient  security  for  the  costs  of  the  suit. 

Penalty. 

The  punishment  of  imprisonment  or  hard  labor  from  four 
months  to  one  year  shall  be  applicable  to  whoever — 

1.  Shall  forge  or  alter,  without  the  consent  of  the  proprietor, 
the  names,  marks  or  distinguishing  signs  of  intellectual  produc- 
tions, or  of  the  product  of  any  industry,  or  knowingly  make  use 
of  such  forged  or  altered  names,  marks  or  signs,  without  the 
consent  of  the  owner,  although  they  be  forged  or  altered  by 
others. 

2.  Shall  forge  or  alter,  without  the  consent  of  the  proprietor, 
any  designs  or  models  of  manufacture,  or  knowingly  make  use 
of  such  forged  or  altered  designs  and  models  of  manufacture, 
although  they  be  forged  or  altered  by  others. 


MALTA  AND  Gozo  321 

3.  Shall  knowingly  make  use  of  any  mark,  sign,  signboard, 
or  emblem,  bearing  an  indication  calculated  to  deceive  a  pur- 
chaser as  to  the  nature  of  the  production,  or  sell  any  production 
with  such  marks,  signs  or  emblems. 

4.  Shall,  by  trading  in  any  goods  in  reference  to  which  a 
trade   mark   has   been   registered,   suppress  that  mark    without 
the  consent  of  the  proprietor  thereof. 

5.  Shall  apply  to  any  goods  a  false  trade  description,  that  is 
to  say,  shall  apply  thereto,  forged  or  altered,  a  figure,  word,  or 
mark  which  according  to  commercial  usage  indicates   (a)   the 
number,  quantity,  measure,  gauge,  or  weight  of  the  goods;  (6) 
the  place  or  country  in  which  the  goods  were  made  or  produced ; 
(c)   the  mode  of  manufacturing  or  producing  the  goods;   (d) 
the  fact  that  the  goods  are  the  subject  of  an  existing  patent,  priv- 
ilege, or  industrial  copyright. 

For  the  purposes  of  this  subsection,  any  figure,  word,  or  mark 
which,  according  to  the  custom  of  the  trade,  indicates  any  of 
the  above  matters,  shall  be  deemed  to  be  a  trade  description 
thereof. 

6.  Shall  knowingly  put  into  circulation,  sell,  or  have  in  his 
possession  for  sale,  or  introduce  from  abroad  for  any  purpose 
of  trade,  any  goods  having  a  fraudulent  imitation  of  a  mark, 
sign,  or  emblem. 

7.  Shall  knowingly  make,  have  in  his  possession,  or  transfer 
to  any  person,   any  die,  block,   machine,   or  other   instrument, 
for  the  purpose  of  forging,  or  of  being  used  for  forging,  a  trade 
mark.     (Art.  281.) 

Article  281  of  Criminal  Laws  Amended. 

The  punishment  of  imprisonment  or  hard  labor  from  four 
months  to  one  year  shall  be  applicable  to  whoever : 

1.  Shall  forge  or  alter,  without  the  consent  of  the  proprietor, 
the  names,  marks  or  distinguishing  signs  of  intellectual  produc- 
tions, or  of  the  product,  of  any  industry,  or  knowingly  make 
use  of  such  forged  or  altered  names,  marks  or  signs,  without 
the  consent  of  the  owner,  although  they  be  forged  or  altered  by 
others. 

2.  Shall  forge  or  alter,  without  the  consent  of  the  proprietor, 
any  designs  or  models  of  manufacture,  or  knowingly  make  use 
of  such  forged  or  altered  designs  and  models  of  manufacture, 
although  they  be  forged  or  altered  by  others. 

3.  Shall  knowingly  make  use  of  any  mark,  sign,  signboard,  or 
emblem,  bearing  an  indication  calculated  to  deceive  a  purchaser 
as  to  the  nature  of  the  production,  or  sell  any  production  with 
such  marks,  signs  or  emblems. 

4.  Shall,  by  trading  in  any  goods  in  reference  to  which  a 
trade  mark  has  been  registered,  suppress  that  mark  without  the 
consent  of  the  proprietor  thereof; 

21 

/ 


322  MALTA  AND  Gozo 

o.  Shall  apply  to  any  goods  a  false  trade  description,  that  is 
to  say,  shall  apply  thereto,  forged  or  altered,  a  figure,  word,  or 
mark  which,  according  to  commercial  usage,  indicates 

(a)  The  number,  quantity,  measure,  gauge,  or  weight  of 
the  goods; 

(b)  The  place  or  country  in  which  goods  were  made  or 
produced ; 

(c)  The  mode  of  manufacturing  or  producing  the  goods; 

(d)  The  fact  that  the  goods  are  the  subject  of  an  exist- 
ing patent,  privilege,  or  industrial  copyright. 

Imported  Goods. 

The  importation  of  goods,  which,  if  sold,  would,  under  this 
Ordinance,  be  liable  to  forfeiture,  and  also  all  goods  manufac- 
tured out  of  these  islands  and  out  of  the  United  Kingdom,  bear- 
ing any  Maltese  or  English  name  or  trade  mark,  and  not  being, 
in  the  latter  case,  accompanied  by  a  definite  indication  of  the 
country  in  which  such  goods  were  produced,  is  prohibited. 

This  provision  shall  not  be  applicable  to  goods  which  shall 
be  landed  in  these  islands  to  be  re-exported.  (Art.  115.) 

Forfeiture  shall  take  place  ipso  jure  if  within  one  month  from 
the  date  of  the  publication  of  a  notice  hereunder  referred  to,  they 
are  not  claimed  by  any  one. 

The  said  notice  shall  indicate  the  articles  to  be  forfeited  and 
the  cause  of  forfeiture;  shall  state  that,  unless  claimed  by  an 
official  letter  or  by  any  other  letter  addressed  to  the  person  who 
signed  the  notice,  within  one  month  from  the  date  of  such  no- 
tice, the  said  goods  shall  be  forfeited;  shall  be  signed  by  the  Col- 
lector of  Customs ;  shall  be  published  twice  with  an  interval  of  at 
least  fifteen  days,  in  the  Government  Gazette  and  in  any  other 
periodical  newspaper,  and  shall  be  posted  up  at  the  entrance  of  the 
Custom  House  and  in  the  Commercial  Exchange.  (Art.  116.) 

If  the  goods  are  claimed,  the  Crown  Advocate  shall,  as  soon 
as  possible,  apply  to  the  First  Hall  of  Her  Majesty's  Civil  Court 
by  way  of  petition  for  an  order  for  the  forfeiture  of  the  goods 
seized.  (Art.  117.) 

The  Collector  of  Customs  may,  before  refusing  to  deliver  the 
goods  referred  to  in  Article  115,  and  before  proceeding,  after 
the  publication  of  the  said  notice,  with  a  view  to  the  forfeiture 
of  the  said  goods,  and  the  Crown  Advocate  may,  before  insti- 
tuting the  proceedings  mentioned  in  the  preceding  Article,  re- 
quire the  provisions  of  the  regulations  hereunder  named  to  be 
complied  with  by  the  parties  concerned,  and  they  shall  satisfy 
themselves,  in  accordance  with  those  regulations,  that  the  said 
articles  are  among  those  the  importation  of  which  is  prohibited 
under  this  Ordinance.  (Art.  118.) 


MAURITIUS  323 


MAURITIUS 

The  area  of  this  island  and  its  dependencies,  etc.,  is  about 
705  square  miles,  or  432,680  acres.  The  estimated  population 
in  1911  was  385,500. 

The  principal  imports  consist  of  machinery,  coals,  rice,  corn 
and  grain,  cotton  goods,  fertilizers  and  preserved  provisions. 

MONEY— 1  rupee  (100  cents)  =ls.  4d.=32  cents  U.  S. 

WEIGHTS  AND  MEASURES — The  metric  system. 

Laws. 

No.  18  of  1868,  No.  13  of  1888,  No.  6  of  1896,  No.  28  of 
1892. 

Duration. 
Unlimited. 

Who  May  Register. 

Any  person,  whether  a  subject  of  His  Majesty  or  not,  and 
any  body  corporate  or  body  of  the  like  nature,  whether  con- 
stituted according  to  the  law  of  this  Colony  or  of  any  of  His 
Majesty's  Dominions,  or  according  to  the  law  of  any  foreign 
country,  and  also  any  company,  association,  or  society  of  per- 
sons, whether  some  of  the  members  thereof  be  subjects  of  His 
Majesty  and  some  of  them  not,  and  whether  such  body  cor- 
porate, body  of  the  like  nature,  company,  association,  or  society 
be  established  or  carry  on  business  within  this  Colony  or  else- 
where, or  partly  within  this  Colony  and  partly  elsewhere.  (Art. 

1.) 

What  May  Be  Registered. 

"Mark"  shall  include  any  name,  signature,  word,  letter,  de- 
vice, emblem,  figure,  sign,  seal,  stamp,  diagram,  label,  ticket,  or 
other  mark  of  any  other  description. 

"Trade  Mark"  shall  include  any  and  every  such  name,  sig- 
nature, word,  letter,  device,  emblem,  figure,  sign,  seal,  stamp, 
diagram,  label,  ticket  or  other  mark  as  aforesaid  lawfully  used 
by. any  person  to  denote  any  article  of  trade,  manufacture  or 
merchandise,  to  be  an  article  or  thing  of  the  manufacture,  work- 
manship, production  or  merchandise  of  such  person,  or  to  be  an 
article  of  any  peculiar  or  particular  description  made  or  sold  by 
such  persons. 

No  mark  shall  have  the  character  of  a  trade  mark  in  this 
Colony  until  it  has  been  duly  registered  in  manner  as  hereafter 
provided. 


324  MAURITIUS 

Mode  of  Application. 

Every  person  wishing  to  register  a  trade  mark  which  he  has 
a  right  to  use,  shall,  for  that  purpose,  either  by  himself  or  by 
any  party  duly  authorized  by  him  on  that  behalf,  make  appli- 
cation in  writing  to  the  Collector  of  Customs. 

The  application  shall  state  what  article  of  trade,  manufacture 
or  merchandise,  being  the  manufacture,  workmanship,  produc- 
tion or  merchandise  of  the  applicant,  such  trade  mark  is  in- 
tended to  denote;  and  it  shall  further  state,  if  necessary,  to  what 
peculiar  or  particular  description  of  such  article  the  said  trade 
mark  is  intended  to  apply.  To  the  said  application  shall  be 
joined  a  facsimile  of  the  trade  mark  to  be  registered.  (Art.  3.) 

The  Collector  of  Customs  shall  keep  a  register  of  trade  marks 
duly  numbered  and  initialed  by  one  of  the  Magistrates  of  Port 
Louis,  upon  which  he  shall  transcribe  every  application  made  to 
him  as  aforesaid.  He  shall  mention  in  the  margin  of  the  transscrip- 
tion  the  date  when  he  received  the  application,  and  he  shall  give  a 
number  to  each  such  application.  He  shall  make  the  same  men- 
tion, and  affix  the  same  number  upon  the  trade  mark  deposited 
with  him,  and  he  shall  file  and  keep  the  said  trade  mark  in 
"a  proper  and  convenient  pace  in  his  office.  He  shall  then  return 
to  the  person  who  has  applied  for  the  registration  of  a  trade 
mark,  the  written  application  made  by  such  person,  after  endors- 
ing thereupon  a  certificate  of  registry  in  the  form  of  Schedule  A. 

Every  person  who  has  caused  a  trade  mark  to  be  registered 
shall  give  notice  thereof  in  three  daily  newspapers,  and  such 
notice  shall  contain  a  summary  description  of  the  trade  mark 
and  the  date  of  its  registration. 

The  Collector  of  Customs  shall  in  the  beginning  of  each 
month  publish  in  the  "Gazette  a  list  containing  the  names  of  the 
parties  who  have  registered  trade  marks,  the  date  of  registra- 
tion and  a  summary  description  of  the  trade  mark  registered. 
(Art.  4.) 

Every  trade  mark  deposited  with  the  Collector  of  Customs 
and  touching  which  a  certificate  of  registry  has  been  delivered 
by  the  Collector,  shall,  in  every  court  in  this  Colony,  be  pre- 
sumed to  be  a  genuine  trade  mark,  unless  proof  to  the  contrary 
•be  adduced,  and  it  shall  be,  as  such,  admissible  in  evidence  in 
every  criminal  prosecution  under  this  Ordinance  as  well  as  in 
every  Civil  action  which  the  proprietor  of  the  trade  mark  may 
be  entitled  to,  at  law,  in  equity,  or  otherwise.  (Art.  5.) 

A  fee  of  Rs.  10  shall  be  paid  into  the  hands  of  the  Collector 
of  Customs,  for  each  certificate  of  Registry  delivered  by  him. 
(Art.  6.) 

Upon  payment  of  a  fee  of  R.  1,  it  shall  be  lawful  for  any 
person  to  examine  the  register  of  trade  marks  kept  by  the 
Collector  of  Customs,  as  well  as  the  trade  marks  filed  in  his 


MAURITIUS 


325 


office.     The  fees  mentioned  in  this  Article  and  in  the  preceding 
one  shall  be  paid  into  the  Treasury.     (Art.  7.) 

Requirements. 

Power  of  attorney ;  five  specimens  of  the  mark ;  three  electros. 
(Form  for  application  may  be  obtained  from  B.  Singer's  Offices.) 

Offenses  and  Penalties. 

Every  person  who — 

(a)     Forges  any  trade  mark ;  or 

(&)  Falsely  applies  to  goods  any  trade  mark  or  any  mark 
so  nearly  resembling  a  trade  mark  as  to  be  calculated  to  de 
ceive;  or 

(c)  Makes  any  die,  block,  machine,  or  other  instrument  for 
the  purpose  of  forging  or  of  being  used  for  forging  a  trade 
mark;  or 

(d)  Applies  any  false  trade  description  to  goods;  or 

(e)  Disposes  of  or  has  in  his  possession  any  die,  block,  ma- 
chine or  other  instrument  for  the  purpose  of  forging  a  trade 
mark;  or 

(f)  Causes   any  of  the  things   above   in  this  Article  men- 
tioned to  be  done,  shall,  subject  to  the  provisions  of  this  Ordi- 
nance,  and   unless   he  proves  that  he  acted  without  intent  to 
defraud,  be  guilty  of  an  offense. 

Every  person  who  sells,  or  exposes  for,  or  has  in  his  posses- 
sion for  sale,  or  any  purpose  of  trade  or  manufacture,  any 
goods  or  things  to  which  any  forged  trade  mark,  or  mark  or 
false  trade  description  is  applied  or  to  which  any  trade  mark,  or 
mark  so  nearly  resembling  a  trade  mark  as  to  be  calculated 
to  deceive  is  falsely  applied,  as  the  case  may  be,  shall  unless 
he  proves — 

(a)  That  having  taken  all  reasonable  precautions  against 
committing  an  offense  against  this  Ordinance,  he "  had  at  the 
time  of  the  commission  of  the  alleged  offense  no  reason  to  sus- 
pect the  genuineness  of  the  trade  mark,  or  mark,  or  trade  de- 
scription ;  and 

(&)  That  on  demand  made  by  or  on  behalf  of  the  pros- 
ecutor he  gave  all  the  information  in  his  power  with  respect 
to  the  persons  from  whom  he  obtained  such  goods  or  things; 
or 

(c)  That  otherwise  he  had  acted  innocently,  be  guilty  of 
an  offense. 

Every  person  guilty  of  an  offense  against  this  Ordinance  shall 
be  liable — 

1.  To  imprisonment,  not  exceeding  two  years,  and  to  a  fine 
not  exceeding  Rs.  1,000;  and 

2.  In  any  case  to  forfeit  to  His  Majesty  every  chattel,  ar- 


326  MAURITIUS 

tide,  instrument,  or  thing  by  means  of  or  in  relation  to  which 
the  offense  has  been  committed. 

The  court  before  whom  any  person  is  convicted  under  this 
Article  may  order  any  forfeited  articles  to  be  destroyed  or  other- 
wise disposed  of  as  the  court  thinks  fit. 

i 
Prohibition   on   Importation. 

Whereas,  it  is  expedient  to  make  further  provision  for  pro- 
hibiting- the  importation  of  goods  which  if  sold,  would  be  liable 
to  forfeiture  under  this  Ordinance — 

1.  All  such  goods,  and  also  all  the  goods  of  foreign  manu- 
facture bearing  any  name  or  trade  mark  being  or  purporting 
to  be  the  name  or  trade  mark  of  any  manufacturer,  dealer  or 
trader  in  the  United  Kingdom,  unless  such  name  or  trade  mark 
is  accompanied  by  a  definite  indication  of  the  country  in  which 
the  goods  were  made  or  produced,  are  hereby  prohibited  to  be 
imported  into  the  Colony,  and  subject  to  the  provisions  of  this 
Article,   shall   be   included   among  goods  prohibited  to  be   im- 
ported as  if  they  were  specified  in  Article  12  of  Ordinance  No. 
8  of  1854. 

2.  Before  detaining  any  such  goods,  or  taking  any  further 
proceedings  with  a  view  to  a  forfeiture  thereof  under  the  law 
relating  to  the  customs,  the  Collector  of  Customs  may  require 
the  regulations  under  this  Article,  whether  as  to  information, 
security,  conditions  or  other  matters,  to  be  complied  with,  and 
may  satisfy  himself  in  accordance  with  those  regulations  that 
the  goods  are  such  as  are  prohibited  by  this  Article  to  be  im- 
ported. 

3.  The   Governor   in   Executive   Council   may   make   regula- 
tions,  either   general   or   special,   respecting   the   detention   and 
forfeiture  of  goods,  the  importation  of  which  is  prohibited  by  this 
Article,  and  the  conditions,  if  any,  to  be  fulfilled  before  such  de- 
tention or   forfeiture,   and  may  by  such   regulations  determine 
the  information,  notices,  and  security  to  be  given,  and  the  evi- 
dence requisite  for  any  of  the  purposes  of  this  Article,  and  the 
mode  of  verification  of  such  evidence. 

4.  Where  there  is  on   any  goods  a  name  which   is   identi- 
cal with  or  a  colorable  imitation  of  the  name  or  a  place  in  the 
United  Kingdom,  that  name,  unless  accompanied  by  the  name 
of  the  country  in  which  such  place  is  situated,  shall  be  treated 
for  the  purposes  of  this  Article  as  if  it  were  the  name  of  a 
place  in  the  United  Kingdom. 

5.  Such  regulations  apply  to  all  goods,  the  importation  of 
which  is  prohibited  by  this  Article,  or  different  regulations  may 
be  made  respecting  different  classes  of  such  goods  or  of  of- 
fenses in  relation  to  such  goods. 

6.  The  regulations  may  provide  for  the  informant  reimburs- 


MEXICO  327 

ing  the  Collector  of  Customs  all  expenses  and  damages  incurred 
in  respect  of  any  detention  made  on  his  information  and  of  any 
proceeding  consequent  on  such  detention. 


MEXICO 

The  Mexican  Republic  is  bounded  on  the  north  by  the  United 
States,  on  the  south  by  Guatemala,  on  the  east  by  the  Gulf  of 
Mexico,  and  on  the  west  by  the  Pacific  Ocean.  The  area  of 
the  Mexican  territory  is  about  767,000  square  miles,  or  about 
the  quarter  of  the  size  of  the  whole  of  Europe.  The  popula- 
tion in  1911  was  estimated  at  15,100,000. 

The  country  is  enormously  rich  in  precious  metals  and  min- 
erals, the  principal  exports  of  which  consist  of  gold  and  silver. 
Most  of  the  gold  mines  are  situated  in  the  State  of  Sonora  and 
of  Lower  California,  while  the  principal  centers  where  silver  is 
purchased  for  export  to  Great  Britain  are  Pachuca  and  Oaxaca. 
In  both  of  these  places  there  are  agents  who  are  intrusted  with 
the  purchase  of  ores  on  behalf  of  British  smelters,  but  the  larg- 
est buyers  and  exporters  are  Germans,  who  supply  the  same 
smelters  in  Great  Britain,  as  well  as  others  on  the  Continent 
and  America. 

The  principal  copper  mining  centers  are :  the  States  of  Ag- 
uascalientes,  Durango,  Michoacan  and  Tamaulipas,  those  pos- 
sessing the  greatest  number  being  Aguascalientes  and  Michoa- 
can. The  State  of  Michoacan  is  the  one  in  which  lead  is  found 
•in  great  abundance,  either  nearly  pure  or  else  in  conjunction 
with  silver. 

Coal  has  been  discovered  and  is  now  being  worked  princi- 
pally in  the  State  of  Coahuilla. 

MONEY — The  peso  (100  centavos=2s.  ld.=50  cents  U.  S. 

WEIGHTS  AND  MEASURES — The  metric  system. 

Law. 
Law  of  August  25,  1903. 

Duration. 
Twenty  years,  renewable  every  twenty  years. 

Applicant. 

Every  Mexican  or  foreigner  can  register  a  trade  mark.  To 
do  so,  he  must  apply  to  the  Patent  and  Trade  Mark  Office  in 
person  or  through  an  attorney. 

Corporations,  companies,  and  all  other  legal  entities  gener- 
ally, have  the  same  right. 


328  MEXICO 

The  representation  and  qualification  of  an  attorney  may  be 
verified  by  a  simple  letter,  serving  as  a  power  of  attorney,  which 
shall  be  signed  before  two  witnesses,  and  the  office  may  demand 
the  ratification  of  the  signatures  of  said  letter  whenever  it  may 
deem  convenient  to  do  so.  (Art.  4.) 

What  May  Be  Registered. 

A  trade  mark  is  the  characteristic  and  peculiar  sign  or  name 
used  by  the  manufacturer,  agriculturist,  or  merchant  in  the 
articles  which  he  produces  or  sells  for  the  purpose  of  distin- 
guishing them  and  to  indicate  their  origin. 

A  trade  mark  may  be  especially  constituted  bv  the  names 
under  a  peculiar  form,  the  denominations,  labels,  wrappers, 
packages  or  holders,  stamps,  seals,  vignettes,  borders,  raised 
embroidery,  filigree,  engravings,  coat  of  arms,  emblems,  reliefs, 
figures,  mottoes,  etc.,  it  being  understood,  however,  that  this 
enumeration  is  simply  made  for  the  purpose  of  illustration,  the 
application  of  trade  marks  not  being  limited  to  said  articles. 
(Art  1.) 

What  Cannot  Be  Registered. 

The  following  can  not  be  registered  as  trade  marks: 

1.  Generical   names  or  titles,  when  the   trade  mark   is   in- 
tended to  protect  articles  embraced   in  the  group  or  class  to 
which  the  name  or  title  refers,  inasmuch  as  the  essential  re- 
quisite, in  order  that  a  title  or  name  may  serve  as  a  trade  mark, 
is  that  it  be  capable  of  indicating  or  distinguishing  the  articles 
thus  protected  from  other  articles  of  precisely  the  same  descrip- 
tion or  kind. 

2.  Everything  that  .is  contrary  to  morals,  good  customs,  or 
to  the  laws  of  the  country,  and  everything  that  may  tend  to 
ridicule  ideas,  persons,  or  articles  worthy  of  consideration. 

3.  The  national  coat  of  arms,  escutcheon,  and  emblems. 

4.  Weapons,  escutcheons,  and  emblems  of  the  States  of  the 
Federation,  national  or  foreign  cities,  foreign  nations  and  states, 
etc.,  without  their  respective  consent. 

5.  The  names,  signatures,  seals  and  pictures  of  private  per- 
sons, without  their  consent.     (Art.  5.) 

Renewal. 

In  order  to  obtain  renewal  of  the  registration  of  a  trade 
mark  the  petition  and  payment  shall  be  made  within  the  first 
six  months  of  the  last  year  of  the  term  from  which  the  regis- 
tration was  granted.  Delay  in  applying  for  a  renewal  of  the 
mark  does  not  result  in  a  loss  of  the  right  to  the  exclusive  use 
of  the  mark,  but  the  renewal  fee  is  increased  according  to  the 
length  of  the  delay.  (Art.  16.) 


MEXICO  329 

Mode  of  Application. 

The  registration  of  a  trade  mark  shall  be  made  without  an 
examination  as  to  its  novelty  under  the  exclusive  responsibility 
of  the  applicant  and  without  prejudice  to  third  parties.  fArt. 
10.) 

The  Patent  and  Trade  Mark  Office  shall  make  a  merely  ad- 
ministrative examination  of  the  documents  filed,  in  order  to 
satisfy  itself  as  to  whether  they  are  complete  and  comply,  con- 
cerning- their  form,  with  the  requisites  provided  by  this  law 
and  the  regulations  thereof. 

Whoever  desires  to  register  a  trade  mark  shall  file  with  the 
Patent  and  Trade  Mark  Office  an  application  accompanied  by 
the  following: 

1.  A   description   of  the   trade   mark,   concluding  the   same 
with  the  proper  reservations  of  the  same.      In  said  description 
shall  also  be  stated  the  following  data :    The  name  of  the  owner, 
the  name  of  the  manufactory  or  business,  should  he  have  any, 
the  place  where  the  latter  is  situated,  and  the  description  of  the 
articles  or  products  to  which  the  trade  mark  shall  be  applied. 

Should  the  interested  party  deem  it  necessary,  a  description 
and  drawings  of  said  articles  or  products  may  also  be  attached. 

2.  Two  copies  of  the  foregoing  documents. 

3.  A  sample  or  cut  of  the  trade  mark ;  and 

4.  Twelve  facsimiles  of  the  trade  mark,  exactly  alike,  shall 
be  used.     (Art.  3.) 

If  the  Patent  and  Trade  Mark  Office  should  find  that  the 
documents  do  not  comply  with  the  requisites  as  to  their  form, 
the  examination  of  which  it  is  the  duty  of  said  office  to  make, 
that  the  trade  mark  does  not  bear  the  inscriptions  referred  to 
in  Sec.  3  of  Art.  9,  or  that  the  article  or  thing  sought  to  be 
registered  is  comprised  in  the  provisions  of  article  5,  in  its 
sections  two  and  three,  shall  regard  the  documents  as  not 
having  been  filed  and  shall  make  known  this  fact  to  the  inter- 
ested party  by  means  of  a  notice. 

(Sec.  2.  Everything  that  is  contrary  to  morals,  good 
customs,  or  to  the  laws  of  the  country,  and  everything  that 
may  tend  to  ridicule  ideas,  persons,  or  articles  worthy  of 
consideration.  Art.  5.) 

(Sec.  3.  The  national  coat  of  arms,  escutcheon,  and  em- 
blems. Art.  5.) 

Should  the  interested  party  not  be  satisfied,  he  may  appeal 
to  the  courts,  in  accordance  with  the  provisions  of  chapter  3 
of  this  law. 

Should  the  Patent  and  Trade  Mark  Office  be  satisfied  with 
the  correctness  of  the  document  filed,  it  shall  so  advise  the 
interested  partv  by  means  of  a  notice. 

The  certificate  of  registration  of  a  trade  mark  shall  be  issued 


330  MEXICO 

by  the  Patent  and  Trade  Mark  Office.  This  certificate  duly 
legalized,  together  with  the  documents  attached  thereto,  con- 
stitutes the  title  which  proves  the  right  to  the  exclusive  use  of 
the  trade  mark. 

Appeals  from  any  decision  of  the  Patent  Office  may  be  taken 
to  the  Minister  of  Fomento  (Department  of  Interior),  who 
may  overrule  the  action  of  the  Director  of  the  Patent  Office. 
However,  he  very  rarely  does  so.  In  fact,  appeals  of  any  kind  are 
unusual  in  trade  mark  cases. 

Should  the  decision  of  the  Department  of  Interior  be  ad- 
verse, within  fifteen  days  from  the  time  of  being  informed  of 
the  decision,  applicant  may  lodge  an  appeal  with  any  of  the 
Federal  Judges  of  the  Courts  of  the  Federal  District.  If  at 
the  end  of  that  period  no  appeal  shall  have  been  taken  the  de- 
cision cannot  be  overruled.  A  period  of  ten  days  for  intro- 
ducing the  testimony  will  be  set  by  the  Court;  at  the  end  of 
which,  time  for  a  hearing  will  be  set  within  three  days,  in  which 
the  arguments  of  the  parties  will  be  heard.  Within  five  days 
from  the  hearing  judgment  must  be  rendered.  From  such 
judgment  appeal  may  be  taken  to  the  Circuirt  Court,  if  it  be 
filed  within  five  davs. 

Documents  Required. 

A  power  of  attorney ;  petition ;  description  of  the  mark  with 
claims  in  triplicate;  electrotype,  and  12  facsimiles  of  the  mark. 
(Form  for  application  may  be  obtained  from  B.  Singer's  Of- 
fices.) 

A  separate  power  is  required  for  each  individual  trade  mark. 
If  the  applicant  is  an  individual,  all  that  is  necessary  is  for  .him 
to  sign  in  the  presence  of  two  witnesses,  who  should  also  sign 
in  the  space  provided  for  their  respective  signatures. 

The  question  (in  the  event  of  the  applicant  being  an  incor- 
porated company,  as  is  more  generally  the  case  in  the  filing 
of  trade  mark  applications)  of  which  of  the  company  officers 
is  entitled  to  execute  a  Power  of  Attorney,  without  necessitating 
additional  legalization  proceedings,  has  been  a  matter  of  dis- 
pute for  some  time,  each  succeeding  official  holding  a  different 
opinion  on  the  subject,  without  any  regard  for  the  laws  of  the 
State  or  Country,  under  which  the  company  may  have  been  in- 
corporated. It  is  beyond  question,  however,  and  all  are  agreed 
on  this  one  point,  that  the  President  and  General  Manager  of 
a  company  are  so  empowered. 

So,  in  order  to  preclude  all  possibility  of  any  question  being 
raised  regarding  the  validity  of  a  Power  of  Attorney  so  exe- 
cuted, it  will  be  wise  to  have  the  power  executed  by  the  Pres- 
ident of  the  applicant  corporation,  or  by  its  General  Manager, 
but  preferably  by  the  President. 

In  the  event  of  legalization  being  necessary  the  legal  organ- 


MEXICO 


33i 


ization  of  the  corporation  and  the  authority  of  the  officer  sign- 
ing for  it  must  be  shown.  A  Notary  Public  must  certify,  under 
seal,  that  the  company  is  duly  organized  and  that  the  person 
signing  is  known  to  him  as  an  official  of  the  company,  with  full 
authority  to  do  so.  Then  the  Clerk  of  the  Court  having  juris- 
diction certifies  that  the  Notary  Public  is  a  duly  authorized 
Public  Official.  The  foregoing  is  certified  by  the  nearest  Mex- 
ican Consul  and  the  signature  of  the  Mexican  Consul  is  authen- 
ticated by  the  Ministry  o>f  Foreign  Relations,  which  completes 
the  document. 

The  petition  is  preferably  made  out  by  the  representative  of 
the  applicant  in  Mexico. 

The  description  is  cumbersomely  detailed,  going  into  every 
feature  of  the  figures,  inscriptions,  lines,  borders,  etc.,  of  the 
mark  and  the  manner  of  applying  it  to  the  goods  protected  by 
it. 

Unless  specially  instructed  to  the  contrary  the  description  is 
made  as  general  as  possible  and  is  not  restricted  to  any  partic- 
ular style  of  lettering,  etc. 

The  claims  are,  substantially,  a  recapitulation  of  the  essen- 
tial distinctive  points  of  the  mark  and  are  incorporated  with 
and  form  part  of  the  description.  The  description  and  claims 
are  signed  by  the  applicant  or  by  his  attorney,  usually  the  latter. 

The  electrotype  must  not  be  more  than  100  mm.  (3.94  inches) 
nor  less  than  15  mm.  (.5  inch)  in  width  or  length  and  must  be 
exactly  24  mm.  thick,  measuring  from  the  printing  surface  to 
the  back  of  the  wooden  supporting  block. 

The  electrotype  must  bear  an  inscription  giving  the  name  of 
the  owner  of  the  mark  and  his  address  and  must  show  what  kind 
of  a  mark  it  is.  If  the  mark  is  to  be  used  by  manufacturers  the 
words  to  be  inscribed  are  "Marca  Industrial  Registrada"  or  a 
contraction  thereof.  If  it  is  to  be  used  by  merchants  the  in- 
scription must  read  "Marca  de  Comercio  Registrada"  or  a  con- 
traction thereof.  In  addition  to  the  above,  every  Trade  Mark 
must,  before  it  is  applied  to  the  goods,  show  the  number,  under 
which  it  was  registered,  and  the  date  of  such  registration.  As 
this  data  cannot  be  inserted  before  the  registration  is  finally 
effected  it  is  always  advisable  to  leave  a  blank  space  on  the 
electrotype  for  their  subsequent  insertion. 

Thus  the  electrotype  accompanying  an  application  for  the 
registration  of  the  trade  mark  "Spearmint"  for  the  Wm.  Wrig- 
ley,  Jr.,  Company,  of  Chicago,  Illinois,  presents  the  following 
appearance : 

SPEARMINT 
Wm.  Wrigley,  Jr.,  Company, 

Chicago,  Illinois, 

Marca  Ind.  Rgtrda. 

No.  de  de  191  . 


332  MEXICO 

Priority. 

The  registration  of  a  trade  mark  shall  be  void  whenever  the 
same  has  been  made  in  contravention  of  the  provision  of  this 
law  and  the  regulations  thereof,  or  when  said  trade  mark  had 
been  previously  registered  by  somebody  else,  if  more  than  two 
years  have  elapsed  since  said  registration,  or,  two  years  not  hav- 
ing elapsed,  another  had  made  the  registration  with  a  better 
right.  (Art.  15.) 

'  The  period  of  two  years  is  granted  to  anybody  who  believes 
himself  to  have  a  better  right.  The  object  of  this  is  to  make  it 
possible  to  investigate  the  priority  or  possession  in  case  the  same 
mark  has  been  used  by  another  person ;  that  is  to  say,  if  another 
person  has  made  prior  use  of  it,  he,  who  later  has  made  the  ap- 
plication, not  only  does  not  obtain  the  registration  but  loses  the 
fees  in  cash  which  he  previously  deposited  upon  making  the 
application. 

The  Mexican  law  does  not  provide  for  a  preliminary  examina- 
tion but  permits  action  to  the  party  who  believes  himself  in- 
jured for  judicial  claim  to  the  property  and  to  petition  for  the 
annulment  of  the  registration. 

Opposition. 
The  law  of  1903  is  silent  on  this  point. 

Marking  Goods. 

The  registered  trade  mark  shall  bear  thereon  visible  inscrip- 
tions, which  shall  respectively  read : 

1.  Those  used  by  manufacturers,  merchants,  agriculturists, 
etc.,  "Registered  Trade  Mark,"  or  the  same  words  written  in 
abbreviation,  together  with  the  number  and  date  of  the  regis- 
tration. 

2.  Those  used  by  merchants  shall  read  "Registered  Commer- 
cial Trade  Marks,"  or  the  same  words  written  in  abbreviation, 
together  with  the  number  and  date  of  the  registration. 

3.  Whenever  the  trade  mark  consists   of  names,  titles,   in- 
scriptions, etc.,  or  of  monograms  or  abbreviations,  or  when  con- 
sisting of  signs  which  are  not  letters,  said  marks  should  bear  the 
names,  titles,  etc.,  or  monograms  or  abbreviations,  said  marks 
shall  necessarily  bear  in   a  conspicuous  or  visible  manner  the 
name  of  the  owner  of  the  industry  or  trade,  the  name  of  the 
business,  manufactory,  etc.,  should  he  have  any,  and  the  place 
where  the  latter  is  situated.     (Art.  9.) 

As  Section  3  of  Article  9  of  the  law  of  marks  now  in  force 
provides,  every  mark,  in  order  to  be  registered,  ought  to  bear, 
when  it  does  not  consist  of  figures  or  signs  which  are  not  letters, 


MEXICO  333 

the  name  of  the  proprietor  of  the  industry  and  the  location  of  the 
factory,  etc.,  except  in  the  case  in  which  the  mark  in  question 
has  been  .registered  in  its  country  of  origin,  since  in  that  case  it 
may  or  may  not  bear  these  indications,  as  stated  in  Article  6  of 
the  Treaty  of  the  International  Union  for  the  Protection  of  In- 
dustrial Property.  (Any  industrial  or  commercial  trade  mark, 
registered  in  a  regular  manner  in  the  country  of  its  origin,  will 
be  admitted  for  registration  and  protected  as  such,  in  all  the 
other  countries  of  the  Union.  Art.  6.)  And  in  regard  to  the 
inscriptions  to  which  Sections  1  and  2  of  the  same  Article  9  re- 
fers, these  are  placed  on  registered  marks  in  order  that  they 
shall  fill  all  the  requirements  that  the  said  law  exacts  and  in  order 
that  their  owners  may  make  use  of  the  penal  actions  which  the 
same  law  grants,  it  being  possible  to  suppress  these  inscriptions 
on  the  marks  registered  in  their  country  of  origin,  if  com- 
prised in  the  mentioned  International  Union. 

Assignment. 

Registered  trade  marks  can  be  transferred  and  sold  or  dis- 
posed of  like  any  other  right ;  but  it  shall  be  an  essential  requisite 
to  state  thereon  the  name  of  the  transferee  when  said  trade 
marks  are  comprised  in  the  case  to  which  section  third  of  Article 
9  refers. 

The  transfer  thereof  shall  be  registered  in  the  Patent  and 
Trade  Mark  Office,  and  without  this  requisite  it  shall  have  no 
effect  against  a  third  party.  (Art.  12.) 

The  transfer  of  a  trade  mark  implies  or  carries  with  it  the 
right  of  industrial  or  commercial  exploitation  of  the  industrial 
product  or  commercial  articles  protected  by  said  trade  mark. 
(Art  13.) 

Fees. 

A  fee  of  five  pesos  shall  be  charged  for  the  registration  of 
extension  of  time  of  a  trade  mark. 

A  fee  of  one  peso  shall  be  charged  for  the  publication  of 
a  commercial  name. 

The  following  fees  shall  be  charged  for  the  registration  of 
a  commercial  advertisement: 

Two  pesos  for  a  five  years'  registration. 

Four  pesos  for  a  ten  years'  registration. 

Four  pesos  for  each  extension  of  time  of  five  years. 

These  fees  shall  be  paid  in  internal  revenue  stamps  in  the  form 
and  manner  prescribed  by  the  regulations  of  this  law. 

Said  regulations  shall  fix  the  fees  which  the  Patent  and  Trade 
Mark  Office  shall  charge  for  other  services,  such  as  registration 
of  transfers,  change  of  place,  renewals  of  the  certificates  of 
registration,  etc.,  which  fees  shall  also  be  paid  in  internal  rev- 
enue stamps.  (Art.  85.) 


334  MEXICO 

Laws  in  Force  in  Mexico  to  Prevent  the  Sale  or  Importation  of 
Goods  Bearing  a  False  Indication  of  Origin. 

Mexico  is  a  signatory  of  the  Convention  of  Paris  of  March 
20,  1883,  and  also  of  the  Madrid  Arrangement  of  April  14,  1891, 
and  for  the  International  Registration  of  trade  marks,  but  she 
has  not  yet  adhered  to  the  Madrid  Arrangement  of  1891  for  the 
prevention  of  false  indications  of  origin.  The  only  law  reported 
upon  relates  to  the  protection  of  trade  marks,  and  prohibits  the 
fraudulent  application  to  goods  of  another's  registered  trade 
mark  or  of  an  imitation  of  a  registered  trade  mark,  and  also  the 
sale,  and  putting  on  sale,  or  circulation,  of  goods  thus  marked. 
The  sale  or  circulation  of  goods  bearing  a  trade  mark  indicating 
false  origin  is  also  prohibited.  Under  the  law  referred  to  pros- 
ecutions for  the  above  offenses  may  be  instituted  by  the  Public 
Prosecutor  or  at  the  instance  of  an  aggrieved  person.  State 
prosecutions  would  apparently  cost  nothing;  in  other  cases  a 
litigant's  expenses  might  range  between  $500  and  $5,000.  A 
General  Customs  Ordinance  requires  a  declaration  of  the  name 
of  the  country  from  which  goods  proceed. 

Penalties. 

ART.  18.-  Whosoever  applies  to  the  articles  that  he  manu- 
factures or  sells,  a  trade  mark  already  legally  in  favor  of  an- 
other person,  for  the  purpose  of  protecting  similar  articles,  shall 
be  punished  with  imprisonment  of  one  or  two  years  and  with 
a  fine  of  from  100  to  2,000  pesos,  or  with  either  of  these  penal- 
ties, at  the  discretion  of  the  judge. 

The  same  penalty  shall  be  imposed  on  whosoever,  in  a  like 
manner,  and  as  provided  by  the  preceding-  paragraph,  should 
apply  to  his  articles  or  merchandise  a  trade  mark  which  should 
prove  to  be  an  imitation  of  the  trade  mark  legally  registered,  in 
such  a  way  that  it  may  be  mistaken  at  first  sight  for  the  legal 
trade  mark,  and  when  only  by  means  of  a  thorough  examination 
can  one  be  distinguished  from  the  other. 

The  same  penalty  shall  be  imposed  on  whosoever  applies  to 
his  articles  or  merchandise  a  trade  mark  that,  though  legally 
registered,  is  made  to  appear  as  being  another  trade  mark,  by 
reason  of  any  addition,  substraction,  or  modification. 

ART.  19.  Whosoever,  without  being  the  author  of  the  acts 
or  deeds  enumerated  in  the  preceding  article,  fraudulently  sells, 
offers  for  sale,  or  puts  in  circulation,  articles  or  merchandise 
marked  in  the  manner  stated  in  the  same  article,  shall  be  pun- 
ished with  imprisonment  and  fine,  or  with  either  of  these  penal- 
ties, at  the  discretion  of  the  judge. 

ART.  20.  Whoever,  without  committing  any  of  the  offenses 
stated  in  the  two  preceding1  articles,  should  use  a  trade  mark, 
which  either  by  its  simple  appearance  or  by  virtue  of  the  in- 


MEXICO  335 

scriptions  or  remarks  accompanying  the  same,  might  cause  the 
public  to  make  an  error  concerning  the  origin  of  the  articles 
whereon  said  trade  mark  had  been  applied,  shall  incur  the  penalty 
of  imprisonment  of  one  or  two  years,  and  a  fine  of  from  100  to 
2,000  pesos,  at  the  discretion  of  the  judge. 

ART.  21.  He  who  fraudulently  sells,  offers  for  sale,  or  puts 
in  circulation,  articles  bearing  a  trade  mark  possessing  the 
irregularities  stated  in  the  foregoing  article,  shall  be  punished 
with  imprisonment  and  fine,  or  with  either  of  these  penalties, 
at  the  discretion  of  the  judge. 

ART.  25.  Whosoever  should  put  on  a  trade  mark  the  state- 
ment that  the  same  is  registered  at  the  Patent  and  Trade  Mark 
Office,  without  it  being  actually  so  registered,  shall  incur  im- 
prisonment and  a  fine,  or  either  one  of  these  penalties,  at  the 
discretion  of  the  judge. 

ART.  26. — In  case  an  offense  should  be  repeated,  the  first  time 
said  repetition  takes  place  the  prescribed  penalties  for  such  offense 
shall  be  increased  by  one-half,  and  upon  every  repetition  said 
penalty  shall  be  successively  increased  by  one-half. 

A  repeater  is  anyone  who  has  committed  the  new  offense  of 
which  he  is  accused  before  five  years  shall  have  elapsed  since 
the  final  decision  which  declared  him  guilty  of  any  of  the  offenses 
mentioned  by  this  law,  even  though  the  previous  offenses  had 
relation  to  another  patent  different  from  that  to  which  the  new 
infringement  or  offense  refers. 

ART.  27.  Printers,  lithographers,  etc.,  who  make  counterfeit 
trade  marks  which  are  improperly  used,  and  whosoever  sells, 
offers  for  sale,  or  puts  them  in  circulation,  shall  be  regarded 
as  joint  authors  or  accomplices,  etc.,  as  the  case  may  be,  in 
accordance  with  their  respective  responsibility,  determined  in 
accordance  with  the  principles  and  provisions  established  by  the 
Penal  Code  of  the  Federal  District. 

ART.  28.  It  shall  be  the  duty  of  the  Public  Prosecutor  and  of 
every  person  who  considers  himself  injured  to  bring  an  action 
in  order  to  prosecute  the  person  or  persons  guilty  of  the  offenses 
specified  in  the  foregoing  articles,  and  once  the  action  is  com- 
menced it  shall  be  officially  continued  by  all  means. 

Procedure  to  Be  Followed  in  Criminal  Actions. 

ART.  06.  Criminal  actions  brought  in  accordance  with  the 
present  law,  if  they  are  brought  before  the  Federal  judges, 
whenever  they  have  jurisdiction,  shall  be  discussed  as  other 
criminal  actions  are  discussed  at  present,  until  the  Code  of 
Federal  Procedure  on  Criminal  Practice  is  issued. 

ART.  67.  When  the  same  actions  have  to  be  brought  before 
the  local  judges  of  the  Federal  district  of  the  States  or  Ter- 
ritories, in  accordance  with  Article  97  of  the  Constitution  and 


336  MEXICO 

the  present  law,  the  procedure  shall  be  that  which  is  in  force 
in  accordance  with  the  laws  of  each  of  said  States  or  Terri- 
tories. 

ART.  68.  The  civil  action  incidental  to  the  criminal  action 
established  by  this  law  may  be  conducted  at  the  same  time  and 
before  the  same  court  which  takes  cognizance  of  the  criminal 
action ;  but  if  the  civil  action  should  reach  the  stage  of  a  de- 
cision before  the  criminal  action  is  finished,  the  civil  case  shall 
be  suspended  until  the  criminal  action  is  in  the  same  stage, 
in  order  that  both  actions  may  be  disposed  of  in  the  same  de- 
cision. 

ART.  69.  If  the  civil  action  is  not  ready  for  decision  and, 
consequently,  would  not  be  decided  at  the  same  time  as  the 
criminal  action,  the  judge  of  the  civil  court  selected  by  the 
plaintiff  shall  afterwards  take  cognizance  thereof,  unless  the 
judge  who  had  taken  cognizance  of  the  criminal  action  exer- 
cises a  combined  jurisdiction. 

ART.  70.  The  civil  action  shall  be  commenced  and  continued 
separately  before  the  proper  court: 

-  I.  Whenever  an  irrevocable  decision  has  been  rendered  in 
the  criminal  action  without  having  commenced  in  due  time 
the  civil  action  in  the  criminal  proceedings. 

II.  Whenever  the  defendant  has  died  before  instituting  the 
-  criminal  action. 

III.  Whenever   the   criminal   action   has   expired  by   limita- 
tion and  the  civil  action  is  still  in  existence. 

ART.  71.  Whenever  the  interested  party  has  initiated  the 
action  on  account  of  a  civil  responsibility  in  the  criminal  action, 
the  question  shall  be  discussed  in  accordance  with  Articles  47 
and  the  following  ones. 

ART.  72.  If  the  criminal  action  is  brought  before  the  local 
courts,  the  question  concerning  civil  responsibility  shall  be  dis- 
cussed as  provided  for  in  the  respective  local  law. 

Commercial  Names  and  Advertisements. 

ART.  73.  The  owner  of  a  commercial  name  has  the  exclu- 
sive right  to  use  it  without  registration  or  any  other  requisite 
whatever ;  and  in  order  to  exercise  this  right  he  shall  be  entitled 
to  bring  a  civil  action  against  whosoever  usurps  or  imitates  said 
right,  in  order  to  stop  the  usurpation  or  imitation,  and  to  demand 
the  payment  of  losses  and  damages,  and  to  bring  a  criminal 
action  in  order  that  the.  guilty  party  be  punished. 

ART.  74.  Notwithstanding  the  provisions  of  the  foregoing 
article,  every  merchant,  whether  native  or  foreign,  has  the  right 
to  have  his  commercial  name  published  in  the  ''Official  Gazette 
of  Patents  and  Trade  Marks;"  in  order  to  obtain  the  preroga- 


MEXICO  337 

tive  or  privilege  prescribed  in  Article  77.  In  order  to  retain  this 
prerogative  it  shall  be  necessary  to  renew  the  publication  every 
ten  years. 

ART.  75.  Whoever  should  in  any  way  use  a  commercial  name 
which  does  not  belong  to  him,  shall  be  subject  to  imprisonment 
and  fine  or  to  one  of  these  penalties,  at  the  discretion  of  the 
judge. 

The  Rights  of  a  Prior  User. 

In  the  First  District  Court  of  Mexico,  under  date  of  April 
3,  1907,  a  decision  was  awarded  in  a  suit  brought  for  the  can- 
cellation of  the  registration  of  a  trade  mark,  which  decision 
is  of  the  utmost  importance  as  a  precedent  for  the  protection 
of  trade  mark  owners  who  may  suffer  in  that  republic  from  the 
wrongful  appropriation  of  their  mark.  It  appears  that  Eduardo 
Noriega  &  Co.  had  for  some  years  used  in  Mexico  a  trade 
mark  "Casino"  for  chocolate,  but  had  neglected  to  register  it. " 
One  Gallastegui  having  registered  the  mark  as  his  own,  the  Com- 
pany thereafter  proceeded  to  register  it  in  its  own  behalf  and  then 
brought  a  suit  to  have  the  registration  of  Gallastegui  pronounced 
void,  upon  the  ground  of  its  prior  use  thereof  in  Mexico. 

Considering  the  question,  the  court  said  that  the  point  to  be 
decided  rested  upon  the  construction  of  Article  15  of  the  trade 
mark  law  now  in  force,  which  provides  that  the  registration  of 
a  trade  mark  shall  be  void  when  the  mark  has  been  already 
registered  previously  by  another,  if  the  registration  was  made 
more  than  two  years  before,  or  if  it  was  made  with  better  right. 
The  phrase  "with  better  right,"  the  court  said,  referred  simply 
to  priority  of  use.  From  this  provision,  it  was  evident  that,  if 
a  second  registration  of  the  mark  was  made  within  two  years 
of  the  first  registration,  the  question  of  the  superior  right  of  the 
earlier  registrant  to  the  mark  was  open  to  litigation ;  whereas, 
if  the  second  registration  had  not  been  made  until  more  than 
two  years  after  the  earlier  registration,  the  later  registrant  was 
precluded  from  attacking  the  earlier  registration,  whether 
rightly  or  wrongly  made  in  the  first  instance.  Thus  the  remedy 
of  one  whose  mark,  long  used  and  well  known  in  Mexico,  but 
not  registered,  had  been  misappropriated  by  another,  is  to  him- 
self register  his  mark  in  Mexico  within  two  years  of  the  wrong- 
ful registration  thereof,  and  then  bring  a  suit  to  establish  his 
rights.  Until  he  has  first  registered,  he  has  no  standing  to  assert 
his  rights,  nor  can  he  acquire  a  standing  to  do  so  after  the  lapse 
of  two  years  from  the  date  of  the  wrongful  registration.  Within 
the  period  of  two  years,  the  registration  is,  as  the  court 
expressed  it,  "simply  a  presumptive  evidence  of  title,  declarative 
and  not  attributive  of  property."  In  contemplation  of  the 
Mexican  law,  the  owner  of  a  trade  mark  is  he  who  first  invented 
and  then  used  it,  and  within  the  two  years  period,  registration, 

22 


338  MEXICO 

the  court  said,  is  simply  to  notify  the  public  of  its  appropriation 
by  the  party  for  his  products,  as  well  as  to  afford  prima  facie 
evidence  of  priority  of  use  and  ownership.  With  the  lapse  of 
the  two  years  period  the  registration  becomes  conclusive  in 
favor  of  any  registrant. 

It  appearing  from  the  proofs  that  the  plaintiff  in  the  case  had 
made  use  of  the  mark  since  the  year  1897  and  had  sold  the 
product  in  Mexico  very  extensively  and  without  interruption 
during  the  subsequent  years  and  prior  to  any  use  thereof  by  the 
defendant,  it  was  decreed  that  the  defendant's  registration  of 
the  mark  be  cancelled.  (Gaceta  Oficial,  1907,  p.  199.) 

Attention  is  particularly  called  to  Article  15  of  the  law,  which 
permits  the  cancellation  of  a  registration  within  two  years  by 
one  having  a  better  right  to  the  mark,  but  making  registration 
conclusive  if  not  attacked  within  two  years.  The  law  gives  no 
definition  of  the  term  "better  right,"  but  the  term  does  not  mean 
mere  priority  of  use.  Moreover,  the  Mexican  office  makes  no 
search  of  prior  registrations,  to  determine  whether  the  mark  has 
been  previously  registered  by  any  other  person,  requiring  the 
party  whose  trade  mark,  although  registered  in  his  own  name, 
has  later  been  registered  in  the  name  of  another,  to  resort  to 
an  action  for  cancellation  in  order  to  clear  the  records.  As  is 
pointed  out,  the  proper  solution  of  the  difficulty  is  to  make  prior 
use  of  the  mark  in  Mexico  or  abroad  the  test  of  better  right, 
whether  the,  mark,  has  been  registered  or  not  by  the  prior  user. 
The  law  of  marks  as  it  stands  at  present  is  characterized  as  a 
measure  which  has  opened  wide  the  doors  to  the  practice  of 
fraud.  Many  merchants  have  established  a  lucrative  business 
in  ascertaining  the  trade  marks  whose  proprietors  have  neglected 
to  register  them  in  Mexico  and  registering  them  in  their  own 
names,  later  offering  to  sell  the  marks  to  the  proper  owners 
thereof,  threatening  to  prevent  the  sale  of  the  goods  unless  an 
exorbitant  sum  is  paid. 


There  seems  to  be  a  difference  in  the  views  of  Mexican 
lawyers  as  to  what  the  remedies  are  that  are  available  to  the 
rightful  owners  of  trade  marks  in  such  cases  of  wrongful  reg- 
istration. One  view  is  based  upon  paragraph  15  of  the  law, 
which  is  as  follows : 

"The  registration  of  a  mark  is  void  when  it  has  been  made 
in  violation  of  the  provisions  of  this  law  and  of  the  regulations 
relating  thereto,  or  when  the  mark  has  been  previously  registered 
by  another,  if  this  registration  has  stood  for  more  than  two 
years,  or  if  having  stood  for  less  than  two  years,  it  was  made 
with  a  better  right." 

The  implication   to  be   derived   from   this  paragraph   is   that 


MEXICO 


339 


after  two  years  the  registration,  however  wrongful  at  the  begin- 
ning, becomes  unassailable. 

A  different  opinion  ascribed  to  Lie.  W.  V.  Backus  is  based 
upon  the  penal  provisions  in  Art.  20  of  the  law,  as  follows: 

"He  who  makes  use  of  a  mark  which,  either  by  reason  of  its 
appearance  simply,  or  by  reason  of  the  inscriptions  or  names 
contained  thereon,  may  cause  the  public  to  be  misled  as  to  the 
source  of  the  goods  to  which  said  mark  has  been  applied,  will 
be  punished  with  one  or  two  years  imprisonment  and  a  fine  of 
from  one  hundred  to  two  thousand  pesos  or  with  either  of  these 
penalties  at  the  discretion  of  the  judge." 

In  the  view  of  Mr.  Backus,  this  paragraph  effectually  nullifies 
any  attempt  to  make  commercial  use  of  a  trade  mark  stolen 
from  another.  As  we  understand  his  view,  it  is  that,  whether 
or  not  the  rightful  owner  of  the  trade  mark  which  has  been 
wrongfully  registered  by  another,  may  or  may  not  retain  the 
right,  after  two  years,  to  have  the  registration  cancelled,  -he 
nevertheless  retains  the  right  to  punish  in  a  penal  proceeding 
the  commercial  use  of  his  mark  by  the  registrant  thereof,  acting 
under  the  authority  of  Sec.  20  above  quoted,  the  theory  being 
that,  the  mark  having  become  known  as  identifying  the  goods  of 
him  who  first  used  it  and  gave  it  currency,  its  use  by  another  is 
misleading  and  criminal.  He  believes  that  the  law  would  not 
be  construed  by  the  court  in  favor  of  conscienceless  marauders 
and  against  the  commercial  interests  of  Mexico  herself,  but  that 
this  provision  of  the  penal  code  would  be  found  broad  enough 
to  cover  the  cases  of  those  who  seek  to  commit  larceny  under 
forms  of  law. 

Decisions. 

William  Underwood  &  Co.  of  Boston,  the  well  known  manu- 
facturers of  deviled  ham  sold  under  that  name,  in  conjunction 
with  the  representation  of  a  devil  in  red  as  a  trade-mark,  had 
occasion  to  try  in  Mexcio  tLe  question  of  their  rights,  against  a 
party  there  who  was  using  a  mark  practically  identical,  upon 
the  same  class  of  goods.  This  mark,  it  appeared,  the  company 
had  used  in  the  United  States  for  forty  years  and  had  been 
shipping  its  goods  to  Mexico  under  that  mark  for  more  than 
twenty  years.  The  mark  had  never  been  registered  in  Mexico, 
although  it  was  the  only  mark  which  the  Underwood  Co.  had 
put  upon  its  products  for  the  Mexican  trade  during  that  period. 

In  the  year  1903,  just  prior  to  the  time  when  the  last  trade 
mark  law  "of  Mexico  became  effective,  the  defendant  presented 
an  application  for  the  registration  of  a  trade  mark  in  Mexico, 
which  consisted  of  the  representation  in  red  and  black  of  a  devil 
without  any  additional  matter,  which  mark  he  had  registered  for 
deviled  ham  of  his  own  production.  This  mark  being  registered 
in  favor  of  the  defendant,  he  thereupon,  began  to  use  the  mark 
upon  his  products,  but  not  in  the  form  in  which  it  was  registered, 


34°  MEXICO 

uniting  the  figure  in  red  with  the  words  "original  deviled  ham" 
in  English,  placing  the  words  in  exactly  the  same  arrangement 
as  .the  plaintiff  used  upon  its  labels  and  otherwise  imitating 
them.  Thereby  the  defendant  misled  the  Mexican  trade,  taking 
away  a  large  part  of  the  plaintiff's  custom  and,  as  his  product 
was  inferior  to  the  plaintiff's,  causing  damage  to  the  reputation 
of  the  plaintiff's  goods. 

Under  the  law  at  that  time  in  force,  it  was  provided  that  he 
who  had  first  made  lawful  use  of  a  mark  was  the  only  one 
who  could  claim  property  rights  therein  or  procure  the  registra- 
tion thereof,  and  that  where  a  mark  had  been  registered  contrary 
to  the  provisions  of  the  law,  it  might  be  judicially  declared  void 
at  the  suit  of  any  interested  party.  The  proceedings  of  Messrs. 
Underwood  &  Co.  were  instituted  upon  the  theory  that  the  law 
of  1889,  under  which  the  registration  of  the  defendant  was 
made,  was  still  in  force  so  far  as  concerned  marks  registered 
under  it,  and  that  under  the  provisions  of  that  law,  as  pre- 
viously stated,  no  difficulty  would  be  experienced  by  them  in 
asserting  their  rights.  The  defendant,  on  the  other  hand,  con- 
tended that  the  plaintiff  was  not  an  interested  party  under  the 
provisions  of  the  statute,  for  the  reason  that  their  testimony 
showed  that  the  company  had  never  themselves  sold  their 
products  in  Mexico,  but  had  simply  sold  it  in  the  United  States 
to  customers  in  Mexico  and  imported  it  into  Mexico  upon  sales 
made  in  the  United  States.  This,  it  was  argued,  and  it  was  so 
held  by  the  court,  did  not  constitute  use  of  the  mark  in  Mexico 
by  Underwood  &  Co.,  that  the  use  of  the  mark,  if  any,  in  Mexico 
was  by  the  customers  of  William  Underwood  &  Co.  and  not 
by  the  company  itself.  Upon  these  grounds  the  court  held 
that  the  plaintiff  had  no  cause  of  action  for  infringement  of  its 
trade  mark  and  dismissed  the  case  with  costs  against  the  plain- 
tiff. (Gaceta  Oficial,  1907,  p.  201.) 

Marking  of  Labels. 

Article  9  of  the  present  Mexican  trade  mark  law  provides 
that  all  registered  marks  shall  in  use  be  accompanied  with  the 
inscription  "Marca  Industrial  Registrada"  or  Marca  de  Com- 
mercio  Registrada,"  according  as  it  is  the  mark  of  a  manu- 
facturer or  of  a  merchant,  either  written  out  in  full  or  abbre- 
viated, together  with  the  number  and  date  of  registration  in 
Mexico. 

A  prominent  American  firm  which  had  recently  brought  a 
suit  in  Mexico  for  the  infringement  of  its  mark  was  confronted 
by  the  infringer  with  the  defense  that  the  plaintiff  had  not  com- 
plied with  the  law  by  marking  his  labels  as  above  required.  The 
defense  was  held  good,  and  the  plaintiff  was  non-suited. 

We  are  informed  upon  competent  authority  that  in  the  case 


MONTENEGRO 


341 


of  a  foreign  trade  mark  if  registered  first  in  its  country  of 
origin  and  if  that  country  is  a  party  to  the  Internationol  Con- 
vention, the  filing  of  a  certified  copy  of  the  foreign  registration 
upon  the  application  to  register  in  Mexico  will  relieve  the 
applicant  of  the  requirement  so  to  mark  his  labels  after  registra- 
tion. It  is  said  that  the  Mexican  Government  construes  Art.  6 
of  this  Convention  which  provides  that  any  mark  registered  in 
the  country  of  origin  shall  be  protected  in  all  countries  of  the 
Union  as  it  is  at  home,  to  require  a  waiver  of  the  peculiar 
requirement  of  its  statute  in  this  particular  so  far  as  concerns 
foreign  trade  marks,  the  prior  registration  "of  which  in  the 
country  of  origin  is  thus  evidenced. 


MONTENEGRO 

Montenegro,  in  the  Balkan  Peninsula,  has  a  territory  of  about 
3,630  English  square  miles  and  a  population  estimated  at  260,000. 
The  entire  population  is  engaged  in  agriculture. 

The  imports  consist  of  cotton,  woolen  goods,  iron  and  other 
metals,  colonials  and  ironmongery.  The  only  government  mo- 
nopolies are  salt  and  tobacco.  There  is  a  steady  development  in 
agriculture,  commerce  and  industry.  There  is  a  through  trade 
with  North  Albania  and  Old  Servia. 

MONEY! — The  Austrian  Krone=100  Heller  of  the  nominal 
value  of  10d.=20  cents  U.  S. 

WEIGHTS  AND  MEASURES — The  metric  system. 

Merchandise  marks  and  commercial  names  may  be  protected  in 
Montenegro.  There  is  no  special  law  as  yet  providing  for  regis- 
tration, protection  being  secured  by  filing  a  petition  addressed  to 
the  King  and  Council  of  State,  which  when  approved  results  in 
the  issuance  of  an  edict  granting  the  exclusive  right  to  the  use 
of  the  mark  or  name  described  in  the  petition. 

The  duration  of  protection,  and  the  conditions  upon  which  the 
protection  is  granted,  rests  in  the  discretion  of  the  King,  who 
fixes  the  same  in  the  edict. 

The  counterfeiting  of  marks,  the  false  use  of  trade  names  and 
marks,  false  indications  of  origin,  etc.,  may  also  be  punished  in 
the  discretion  of  the  King. 

Treaties  arranging  for  the  reciprocal  protection  of  industrial 
property  have  been  concluded  between  Montenegro  and  Great 
Britain,  France  and  Italy. 

Documents  Required  to  Obtain  Protection  of  Mark. 

(1)  Power  of  attorney,  signed  by  applicant  and  legalized  by 
a  Russian  consul. 

(2)  Description  of  mark,  with  a  statement  showing  the  man- 


342  MOROCCO — NATAL 

ner  of  its  employment,  and  stating  the  full  name,  address  and 
occupation  of  the  applicant. 

(3)  Wood-cut  or  electrotype  of  the  mark. 

(4)  Six  facsimiles  of  the  mark. 


MOROCCO 

The  boundaries  of  this  State  being  undetermined,  its  area  can- 
not be  given,  but  it  is  usually  estimated  at  219,000  square  miles. 
The  population  is  stated  at  6,000,000.  Fez,  the  capital,  has 
about  100,000  inhabitants. 

The  principal  ports  are  Tangier  and  Casablanca  (Dar-al- 
Baida),  and  others,  Laraiche,  Rabat,  Mazagan,  Saffi,  Mogador 
and  Tetuan. 

The  country  has  no  factories ;  its  industries  are  pastoral  and 
agricultural. 

The  principal  articles  of  import  are  tissues,  sugar  and  tea,  raw 
silks,  woolens  and  iron  goods. 

The  leather  industry  is  very  extensive,  and  largely  represented 
in  the  making  of  saddles  and  purses. 

Trade  marks  being  unknown  to  native  manufacturers,  no 
Moroccan  laws  or  regulations  have  ever  been  made  with  respect 
to  them.  The  Moroccan  government  engages  to  protect  trade 
marks  affixed  to  foreign  goods  to  the  extent  that  if  a  Moroccan 
merchant  should  counterfeit  the  said  trade  marks,  or  cause  them 
to  be  counterfeited,  goods  found  to  bear  such  false  marks  shall 
be  confiscated  for  the  benefit  of  the  Moroccan  government,  and 
the  author  of  the  falsification  shall  be  severely  punished. 

With  regard  to  the  protection  of  foreign  trade  marks  against 
infringement  by  foreigners  in  Morocco,  the  foreigners  in  Moroc- 
co are  amenable  solely  to  the  jurisdiction  of  the  Tribunals  of  their 
respective  countries  and  subject  only  to  their  laws. 

By  virtue  of  agreement  entered  into  between  the  legations, 
trade  marks  in  Morocco  are  protected  against  the  subjects  of 
those  countries  who  could  be  prosecuted  in  their  respective  Con- 
sular Courts  for  infringement  of  such  trade  marks. 


NATAL 

The  area  of  this  colony  is  about  36,000  square  miles  and  the 
population  in  1911  was  estimated  at  1,600,000. 

The  staple  products  of  the  coast  districts  are  sugar,  coffee, 
arrowroot,  pepper,  and  tobacco ;  the  banana,  pineapple  and  most 
tropical  fruits  flourish  under  cultivation,  and  the  other  parts 


NATAL 


343 


of  the  country  are  devoted  to  the  growth  of  cereals  and  the  breed- 
ing of  horses,  horned  cattle  and  sheep.  Tea  is  also  grown. 

The  black  wattle  bark  industry  is  now  a  flourishing  one.  The 
imports  consist  chiefly  of  apparel,  haberdashery,  flour  and  grain, 
leather  goods,  ironware,  machinery;  also  wines,  spirits,  etc. 

MONEY,  WEIGHTS  AND  MEASURES — Same  as  Great  Britain. 

Law. 
Law  to  establish  a  Register  of  Trade  Marks,  No.  4  of  1885. 

Rules. 

Government  Notices  Nos.  704,  1898 ;  433,  1901 ;  697,  1903. 

Duration. 

Trade  marks  can  be  registered  in  perpetuity  subject  to  the 
payment  of  a  renewal  fee  before  the  expiration  of  each  14  years. 

Where  the  renewal  fee  has  not  been  paid  within  three  months 
after  the  expiration  of  the  period  of  protection  it  is  removed 
from  the  Register,  but  may  be  restored  by  the  comptroller  upon 
the  payment  of  the  prescribed  additional  fee. 

The  original  certificate  of  registration  should  be  produced 
when  paying  renewal  fees. 

What  May  Be  Registered. 

A  name  of  an  individual  or  firm  printed,  impressed,  or  woven 
in  some  particular  and  distinctive  manner. 

A  written  signature  or  copy  of  a  written  signature  of  the  in- 
dividual or  firm  applying  for  registration  thereof  as  a  trade  mark. 

A  distinctive  device,  mark,  brand,  heading,  label,  ticket,  or 
fancy  word  or  words,  not  in  common  use. 

There  may  be  added  to  any  one  or  more  of  these  particulars, 
any  letters,  words,  or  figures,  or  combination  of  letters,  words 
or  figures,  or  any  of  them. 

It  will  be  noted  that  the  above  definition  of  a  trade  mark 
capable  of  being  registered  is  not  as  full  or  as  wide  as  a  defini- 
tion of  a  trade  mark  in  the  other  South  African  Colonies.  This 
may  be  due  to  the  fact  that  no  alteration  in  the  Natal  Law  has 
taken  place  during  the  last  twenty  years,  whilst  there  has  been 
recent  legislation  in  the  other  Colonies. 

Series  of  Marks. 

When  a  person,  claiming  to  be  the  proprietor  of  several  trade 
marks,  which,  while  resembling  each  other  in  the  material  par- 
ticulars thereof,  yet  differ  in  respect  of— 

(a)  The  statement  of  the  goods  for  which  they  are  respective- 
ly used,  or  proposed  to  be  used ;  or 


344  NATAL 

(b)     Statements  of  numbers ;  or 
•  (c)     Statements  of  price;  or 

(d)  Statements  of  quality;  or 

(e)  Statements  of  names  of  places,  seeks  to  register  such 
trade  marks,  they  may  be  registered  as  a  series  in  one  registra- 
tion.    A  series  of  trade  marks  shall  be  assignable  and  trans- 
missible only  as  a  whole ;  but  for  all  other  purposes  each  of  the . 
trade  marks  composing  a  series  shall  be  deemed  and  treated  as 
registered  separately. 

Mode  of  Application  and  Documents  Required. 

In  order  to  obtain  registration  of  a  trade  mark  the  only  docu- 
ment required  to  be  filed  with  the  Comptroller  is  an  application 
form. 

Where  the  applicant  is  a  firm  the  application  must  be  signed 
by  a  partner  of  the  firm,  who  should  add  the  words  "a  member 
of  the  firm"  after  his  signature,  and,  in  the  case  of  a  Company, 
by  the  Secretary  or  other  proper  .officer,  who  should  add  after 
his  signature  "For  the  Company." 

It  is  essential  that  the  full  names  of  all  the  members  of  the 
firm  should  be  given  in  the  application  form. 

The  application  form  must  be  signed  by  the  applicant  himself, 
and  cannot  be  signed  by  an  agent  acting  under  a  power  of  attor- 
ney, and,  although  a  power  of  attorney  is  not  necessary  to  en- 
able the  agent  to  make  an  application  for  registration  of  a  trade 
mark,  one  should  be. sent  for  use  in  case  of  need. 

The  Comptroller  is  guided  to  a  large  extent  by  British  prece- 
dent, where  applicable,  although  it  does  not  necessarily  follow 
that  because  a  mark  has  been  registered  in  Great  Britain  that  it 
will  pass  unchallenged  in  this  Colony. 

No  mark  will  be  accepted  for  registration  unless  consisting  of 
or  containing  one  or  more  of  the  above  essentials.  The  Comp- 
troller may,  if  he  thinks  fit,  refuse  to  register  a  trade  mark ;  such 
refusal  is.  however,  subject  to  appeal  to  the  Governor  in  Coun- 
cil, who  may,  if  he  thinks  fit,  hear  the  applicant  and  the  Comp- 
troller. 

The  registration  of  a  trade  mark  is  deemed  to  be  equivalent 
to  the  public  use  of  the  trade  mark. 

A  trade  mark  may  be  registered  in  any  color,  and  such  regis- 
tration shall,  subject  to  the  provisions  of  the  law,  confer  upon 
the  registered  owner  the  exclusive  right  to  use  the  same  in  that 
or  any  other  color. 

The  period  to  effect  the  registration  of  a  trade  mark  and  obtain 
certificate  of  registration  is  about  five  weeks  from  the  time  the 
papers  are  filed  with  the  Comptroller. 

Where  the  registration  of  a  trade  mark  has  not  been,  or  shall 
not  be,  completed  within  twelve  months  from  the  date  of  the  ap- 


NETHERLANDS  345 

plication,  by  reason  of  default  on  the  part  of  the  applicant,  the 
application  shall  be  deemed  to  be  abandoned. 

As  the  application  has  to  be  advertised  it  is  recommended  that 
the  electrotype  or  block  should  be  as  small  as  possible,  consistent 
with  clearness,  in  order  to  reduce  the  cost  of  advertising.  Special 
care  should  be  taken  to  see  that  the  electrotype  or  block  sent  will 
print  clearly.  Half-tone  blocks  are  not  accepted. 

Assignments. 

A  trade  mark,  when  registered,  shall  be  assigned  and  trans- 
mitted only  in  connection  with  the  good  will  of  the  business  con- 
cerned in  the  particular  goods  or  classes  of  goods  for  which  it 
has  been  registered  and  shall  be  determinable  with  that  good  will. 
Certificate  of  registration  should  be  produced  when  registering 
an  assignment. 

Where  a  person  becomes  entitled  to  a  registered  trade  mark 
by  assignment  or  otherwise  a  request  for  the  entry  of  his  name 
in  the  register  as  proprietor  of  the  trade  mark  shall  be  addressed 
to  the  Comptroller,  Registrar's  Office. 


NETHERLANDS   (HOLLAND) 

This  kingdom  has  an  area  of  12,650  square  miles,  and  a  popu- 
lation in  1911  estimated  at  5,900,000.  Its  extent  from  north  to 
south  is  about  160  miles,  and  from  east  to  west  about  100  miles. 

Holland  is  above  all  things  a  commercial  country  and  derives 
its  principal  importance  from  trade  with  its  eastern  possessions 
and  with  foreign  nations.  It  is,  however,  mainly  as  an  outlet 
and  inlet  for  the  trade  of  northern  Europe  that  its  importance 
at  present  consists. 

The  imports  consist  principally  of  grain,  Indian  corn,  beans, 
peas,  rice,  brans,  flour,  groundnuts,  palmnuts,  seeds,  feeding 
cakes,  oils,  cottonseed,  sesame,  petroleum,  fish,  meat,  tallow,  lard, 
margarine  (raw),  salt,  syrup,  molasses,  sugar,  tobacco,  cigars, 
tea,  coffee,  spices,  wines,  spirits,  beers,  malt  extract,  mineral 
waters,  ores,  metals,  engines,  wood  and  timber,  drugs,  dye  stuffs, 
chemicals,  etc. 

MONEY — The  guilder  (100  cents)=ls.  8d.=40  cents  U.  S. 

WEIGHTS  AND  MEASURES — The  metric  system. 

Law. 

Law  of  September  30,  1893  relating  to  the  registration  of 
designs  and  trade  marks  as  amended  by  the  Law  of  December 
30,  1904. 


346  NETHERLANDS 

Terms. 

Registration  lasts  for  twenty  years.  This  period  can  be  pro- 
longed for  further  periods  of  twenty  years,  provided  the  pro- 
longation is  applied  for  before  the  expiration  of  twenty  years. 
In  such  cases  the  same  formalities  must  be  observed  as  at  the 
first  registration. 

Renewal. 

The  registration  of  trade  marks  must  be  renewed  before  the 
expiration  of  twenty  years.  The  duration  of  the  protection  of 
all  trade  marks  registered  before  the  1st  of  December,  1893  is 
extended  from  fifteen  to  twenty  years. 

The  duration  is  reckoned  from  the  final  registration,  and  all 
trade  marks  which  have  been  registered  under  the  Laws  of 
1880  and  1885  are  subject  to  the  provisions  of  the  Law  of  Sep- 
tember 30,  1893,  and  also  to  those  of  the  Amending  Law  of 
December  30,  1904. 

In  view  of  the  renewals  which  are  constantly  being  dealt  with 
in  the  Industrial  Property  Office,  and  especially  in  view  of  the 
circumstance  that  in  many  cases  it  is  necessary  to  first  transfer 
a  trade  mark  to  the  new  proprietor  where  a  change  has  taken 
place  in  ownership  of  the  mark,  we  recommend  not  to  delay  the 
renewal  until  the  last  moment. 

In  every  case  in  which  the  business  of  the  original  applicant 
has  been  transferred  to  another  person  or  firm  or  has  been  con- 
verted into  a  limited,  liability  company,  the  renewal  cannot  be 
effected  until  the  transfer  of  the  trade  mark  has  been  entered 
in  the  register. 

An  extension  of  the  classes  of  goods  for  which  the  mark  has 
originally  been  registered,  is  not  admissible  in  the  case  of  re- 
newal, and  the  mark  which  is  to  be  renewed  must  agree  exactly 
with  the  mark  originally  registered. 

The  certificate  of  renewal  is  issued  within  three  weeks,  as  in 
the  case  of  a  first  registration  and  the  renewed  registration  re- 
ceives a  fresh  number.  The  renewal  is  published  in  the  first 
number  of  the  Patent  and  Trade  Mark  Journal  of  the  next  fol- 
lowing month. 

Who  May  Apply. 

Until  proof  be  produced  to  the  contrary,  the  person  who  first 
makes  application  for  the  registration  of  his  trade  mark  will 
be  considered  to  have  first  made  use  of  it. 

The  following  cannot  be  registered  as  trade  marks : 
Marks  containing  obscene  words  or  figures,  or  such  as  would 
be  contrary   to  laws.     Those  containing,   even  though   with   a 
slight  alteration,  the  national  coat  of  arms,  nor  those  of  any 
province  or  community  or  any  other  public  corporation. 


NETHERLANDS  347 

If  the  trade  mark  sent  for  registration  is  identical  with  or 
closely  resembles  a  trade  mark  already  registered  for  the  same 
goods  under  the  name  of  another,  or  has  previously  been  sent 
by  another,  or  if  it  is  contrary  to  aforesaid  provisions,  the  regis- 
tration may  be  refused. 

Priority. 

The  right  to  the  exclusive  use  of  a  trade  mark  for  distinguish- 
ing the  products  of  industry  or  of  commence,  of  one  person 
from  those  of  others,  appertains  to  him  who,  in  the  Kingdom 
in  Europe  or  in  the  colonies  or  possessions  in  other  parts  of  the 
world,  shall  have  first  made  use  of  the  mark  for  the  purpose  in- 
dicated, but  only  as  regards  the  kind  of  goods  for  which  the 
trade  mark  shall  have  been  employed  and  during  a  duration  not 
exceeding  three  years  after  the  last  use  that  has  been  made  of  it. 

Requirements  for  Registration. 

The  following  particulars  should  be  sent  to  the  Bureau  of  In- 
dustrial Property  by  any  person  requiring  the  registration  of 
a  trade  mark : 

1.  Power  of  attorney. 

2.  Application   for  registration   with  name  in   full,  address, 
business  and  nationality  of  the  applicant  and  the  species  of  goods 
for  which  the  applicant  desires  the  trade  mark  to  be  registered. 

3.  A  full  description  of  the  trade  mark. 

4.  Six  copies  of  the  trade  mark,  two  of  them  to  be  signed 
by  the  applicant.     If  in  the  description  the  color  of  the  trade 
mark  is  mentioned  as  distinctive  character,   then   at  least  ten 
copies  of  the  trade  mark  must  be  produced. 

5.  An  electrotype  of  the  trade  mark  not  less  than  1.5  cm. 
and  not  exceeding  10  cm.  in  length  and  breadth  and  2.4  cm.  in 
depth. 

(Forms  for  application  may  be  obtained  from  B  Singer's  Of- 
fices.) 

Formalities. 

If  the  registration  of  a  trade  mark  has  been  refused,  the  appli- 
cant may,  within  one  month,  appeal  against  such  refusal  to  the 
Court  of  Justice  (Arrondissements-Rechtbank)  at  The  Hague 
with  a  view  to  having  the  registration  ordered. 

Appeals. 

When  a  registered  trade  mark  is  identical  with  or  nearly  re- 
sembles that  to  which  for  the  same  species  of  goods  another  per- 
son has  a  right,  because  of  having  first  made  use  of  it  or  when 
the  trade  mark  contains  the  name  of  the  individual  or  firm  to 
which  another  has  the  right,  he  who  claims  such  a  right,  is  em- 
powered within  six  months  to  appeal  to  the  Court  of  Justice 


NETHERLANDS 

(Arrondissements-Rechtbank)  at  The  Hague  with  a  view  to 
having  the  registration  declared  null  and  void.  Even  after  the 
expiration  of  this  term  of  six  months  the  claimant  may  request 
that  the  registration  be  declared  null  and  void  provided  that  his 
right  is  established  by  decree  of  a  Court  of  Justice. 

An  appeal  against  the  decision  of  the  Court  of  Justice  at  The 
Hague  may  be  made  to  the  Court  of  Appeals  in  the  same  place 
within  a  period  of  one  month  from  the  date  of  such  decision. 

An  appeal  against  the  decision  of  the  Court  of  Appeals  may  be 
sent  to  the  High  Court  of  Netherlands  (Hoogen  Raad),  within 
a  period  of  one  month  from  the  date  of  such  decision. 

Application  Under  Convention. 

A  subject  of  one  of  the  States  adhering  to  the  International 
Convention  may,  in  registering  his  trade  mark  in  the  Nether- 
lands claim  priority  of  four  months  from  the  date  of  registra- 
tion of  his  mark  in  one  of  the  other  States,  a  member  of  the 
Convention.  It  is  sufficient  to  state  the  number  and  date  of  the 
registration  in  the  home  country,  in  making  such  application, 
an  official  certificate,  therefore,  not  being  required. 

A  priority  may  be  claimed  as' well  by  a  subject  of  one  of  the 
States  adhering  to  the  International  Convention  for  the  registra- 
tion in  the  Netherlands  of  trade  marks  which  are  used  on  exhi- 
bitions, officially  sanctioned  in  one  of  the  States,  this  priority 
being  six  months  after  the  opening  of  said  exhibitions. 

Assignments. 

For  the  entry  of  the  transfer  of  a  trade  mark  in  the  Trade 
Marks  Register,  it  is  absolutely  necessary  that  the  good  will  and 
business  of  the  original  proprietor  of  the  trade  mark  shall  also 
have  been  assigned  to  the  subsequent  proprietor. 

Requirements:  (a)  A  power  of  attorney  to  be  signed  by  the 
new  proprietor  (no  legalization).  The  form  of  power  of  at- 
torney for  registrations  may  also  be  used  for  transfers,  (b)  A 
copy  of  the  deed  of  assignment  of  the  business  to  the  new  pro- 
prietor, or  an  extract  from  the  said  deed,  showing  clearly  that 
the  trade  mark  has  been  assigned,  together  with  the  good  will 
and  the  business.  This  document  must  be  executed  before  a 
notary  and  legalized  before  a  Dutch  consul ;  it  is  not  returned. 

If  in  the  copy  of  the  deed  of  assignment  or  of  the  extract  from 
same,  it  is  not  particularly  mentioned  that  the  trade  marks  have 
been  assigned  together  with  the  good  will  and  business,  the 
power  of  attorney  must  be  signed  by  the  original  proprietor  of 
the  mark  as  well. 

In  cases  where  a  deed  of  assignment  does  not  exist  or  cannot 
be  procured,  the  Registrar  contents  himself  in  some  cases  with 
a  declaration  of  a  notary  or  with  a  declaration  signed  by  the 


NETHERLANDS  349 

original  proprietor  of  the  mark  to  the  effect  that  a  deed  of  as- 
signment does  not  exist  and  in  which  must  furthermore  be  de- 
clared that  the  good  will  and  business,  as  well  as  the  mark  or 
marks,  have  been  assigned  to  the  subsequent  proprietor.  Such 
declaration  must  be  legalized  by  a  Dutch  consul,  and  if  possible, 
the  power  of  attorney  should  be  signed  by  both  parties. 

A  deed  of  assignment,  an  extract  from  same,  and  declarations 
of  the  kind  above  referred  to  are  accepted  by  the  Industrial 
Property  Office  in  the  English,  French  or  German  language,  no 
translation  in  Dutch  being  required. 

It  is  advisable  to  file  the  original  certificate  of  registration  to- 
gether with  the  required  documents. 

A  certificate  of  the  transfer  is  issued  in  about  three  weeks,  and 
the  transfer  is  published  in  the  first  number  of  the  Patent  and 
Trade  Mark  Journal  of  the  next  following  month. 

A  mere  change  in  the  name  of  the  proprietor  of  the  trade  mark 
can  only  be  recorded  in  the  Trade  Marks  Register  by  payment 
of  the  same  government  fees  and  by  fulfilling  the  same  formali- 
ties as  for  the  transfer  of  a  trade  mark. 

For  this  purpose  is  required: 

(a)  Power  of  attorney    (no  legalization). 

(b)  An  extract  from  the  Commercial  Register  or  Trade 
Register  of  Firms,  showing  that  the  change  in  the  name 
has  been  officially  recorded.    This  document  must  be  legal- 
ized by  a  Dutch  Consul. 

Fees. 

On  filing  a  trade  mark  the  sum  of  10  guilders  must  be  paid 
for  each  mark ;  this  sum  will,  in  no  case,  be  returned. 

Classification. 

Classes  of  goods  which  necessitate  registration  in  each  class 
separately,  do  not  exist  in  the  Netherlands.  It  is  therefore  pos- 
sible to  register  a  mark  for  a  great  number  of  goods  by  one 
single  application,  but  it  is  advisable  to  divide  them  into  groups 
so  as  to  obtain  the  protection  as  broad  as  possible.  A  mark  can 
only  be  registered  in  respect  of  the  goods  for  which  it  is  prac- 
tically used  and  not  for  all  other  goods  for  which  the  applicant 
might  intend  to  use  it  later.  If  applicant's  name,  his  occupation 
or  any  printing  on  the  mark  gives  rise  to  the  supposition  that 
applicant  does  not  deal  in  all  the  goods  mentioned  in  the  appli- 
cation, the  Registrar  will  refuse  registration  for  those  goods  that 
do  not  fall  under  applicant's  business ;  unless  applicant  can  prove 
that  he  in  fact  deals  in  same. 

Should,  however,  a  trade  mark  contain  any  indication  with  re- 
spect to  the  goods  for  which  it  is  used,  registration  for  all  other 
goods  is  not  admissible. 


35°  NETHERLANDS 

Registration  can  either  be  obtained  for  butter  or  margarine, 
but  not  for  both  together. 

Word  Marks. 

Trade  marks  which  consist  of  words,  single  letters,  numbers 
or  historical  names  may  be  registered  in  the  Netherlands,  pro- 
vided that  they  are  not  of  a  descriptive  character,  and  do  not  con- 
sist of  designations  of  goods  which  are  in  general  use  in  the 
trade  or  which  are  contained  in  the  Dutch  Pharmacopoeia. 

Name  of  Another  Person. 

The  name  of  a  third  person  can  only  be  registered  as  a  trade 
mark  if  a  declaration  of  consent  of  the  said  third  person  or  of 
his  heirs  be  furnished.  This  document  must  be  legalized  by  a 
Dutch  consul.  The  same  requirement  applies  to  cases  where  a 
pictorial  representation  contains  such  a  name. 

Marking  Goods. 

"Gedeponeerd  Fabrieksmerk"  for  industrial  marks ;  "Gede- 
poneerd  Handelsmerk"  for  commercial  marks;  "Wettig  Gede- 
poneerd" (most  generally  used — registered  in  accordance  with 
the  Act). 

Laws  in  Force  in  the  Netherlands- to  Prevent  the  Sale  or 

Importation  of  Goods  Bearing  a  False  Indication 

of  Origin. 

The  law  prohibits  the  importation,  sale  or  offering  for  sale  in 
the  European  territory  of  the  Netherlands  of  goods  falsely 
marked  with  another's  trade  name  or  mark  or  an  imitation  there- 
of, as  well  as  of  goods,  falsely  bearing  the  name  of  any  locality 
as  indication  of  the  place  of  origin,  when  such  indication  is  as- 
sociated with  a  trade  name  of  a  fictitious  character. 

Annulment. 

An  objection  against  the  registration  of  a  trade  mark  can  only 
be  prosecuted  by  way  of  a  petition  for  annulment  and  that  such 
petition  must  be  lodged  within  six  months  from  the  date  of 
publication  of  the  registration  before  the  "Arrondissements- 
Rechtbank"  at  The  Hague,  and  not  before  the  Industrial  Prop- 
erty Office. 

Grounds  for  annulment  are : 

(a)  That  the  registered  mark  is  completely  or  mainly  simi- 
lar to  a  mark  to  which  another  person  has  a  right  for  the  same 
class  of  goods  on  account  of  "first  use"  in  this  country ; 

(&)  That  the  registered  mark  contains  the  name  or  the  trad- 
ing style  of  another  person. 


NETHERLANDS  351 

Petitions  for  annulment  of  internationally  registered  trade 
marks,  as  far  as  the  entry  in  the  Register  of  Holland  of  said 
registrations  is  concerned,  may  be  based  on  the  same  afore- 
mentioned grounds  and  can  be  lodged  within  nine  months  from 
said  entry. 

-  Infringement. 

Persons  imitating  registered  trade  marks  or  persons  who 
use  fraudulent  trade  marks  in  connection  with  goods  may  be 
prosecuted  either  in  civil  or  in  criminal  courts. 

An  in f ringer  who  is  condemned  in  the  courts  may  be  punished 
either  by  fine  or  imprisonment. 

In  a  case  of  a  civil  action  (for  damages)  the  amount  of  the 
damages  is  to  be  fixed  by  the  court. 

DECISIONS. 
Right  of  Priority. 

Under  the  law  of  the  Netherlands,  the  right  to  protection  de- 
pends upon  priority  of  use  of  a  trade  mark  in  that  country  or  its 
colonies.  Accordingly,  the  registration  of  a  trade  mark  by  any 
other  than  the  first  user  does  not  cut  off  the  latters  rights,  but 
they  may  be  enforced  upon  proof  of  prior  use  by  him.  The  regis- 
tration is  merely  prima  facie  evidence  that  the  registrant  was 
the  first  user  of  the  mark.  Within  six  months  after  the  registra- 
tion of  a  mark  to  which  another  claims  a  prior  right,  the  claim- 
ant may  appeal  to  the  Court  of  Justice  at  The  Hague,  with  a 
view  to  having  the  registration  declared  void.  After  the  ex- 
piration of  the  term  of  six  months,  the  claimant  may  still  apply 
for  the  cancellation  of  the  mark,  but  he  must  first  have  his  prior 
right  to  the  mark  adjudicated  by  a  court  in  an  independent  pro- 
ceeding. 

It  has  been  held  by  the  above  mentioned  court,  under  date  of 
June  10,  1898,  that  under  Section  2  of  the  International  Con- 
vention, the  subjects  or  citizens  of  another  country,  a  member  of 
the  Convention,  have  the  same  rights  in  this  respect  as  a  native. 
In  the  case  in  controversy,  the  former  agent  of  an  English  firm 
had  registered  the  mark  of  his  principal,  but  the  registration  was 
declared  void  and  ordered  by  the  court  to  be  cancelled. 

Word  Marks. 

The  Supreme  Court  of  the  Netherlands  in  a  more  recent  de- 
cision has  held  that  the  law  protects  the  word,  not  only  in  the 
particular  form  in  which  it  is  registered,  but  in  any  form.  It 
results  from  the  origin  and  the  meaning  of  the  Dutch  trade  mark 
law,  that  a  word,  regardless  of  its  use  in  any  particular  form, 
can  distinguish  the  goods  to  which  it  is  applied  from  others  of 
a  different  origin;  and  that  the  law  protects  such  a  word  mark, 
irrespective  of  the  form  in  which  it  is  used. 


352  NETHERLANDS 

The  Right  to  a  Firm  Name. 

As  the  law  of  the  Netherlands  makes  no  special  provision  for 
the  protection  of  firm  names,  it  has  become  the  custom  among 
manufacturers  and  traders  to  register  their  firm  name  as  a  trade 
mark  under  the  trade  mark  law.  The  extent  of  the  protection 
obtained  by  such  registration  has  lately  been  the  subject  of  judi- 
cial decision,  and  the  prudence  of  such  registration  has  been  vin- 
dicated. 

The  case  had  to  do  with  the  famous  medical  preparation 
"Haarlem  Oil,"  familiar  to  the  world,  during  several  centuries. 
The  originator  of  this  preparation,  was  one  Claas  Tilly,  who  be- 
gan to  make  it  toward  the  end  of  the  seventeenth  century.  Now 
that  this  preparation  has  become  so  widely  known  throughout 
the  world,  various  firms  have  become  engaged  in  its  manufacture 
and  the  question  of  the  right  to  use  the  name  of  its  discoverer 
has  become  to  them  one  of  importance.  At  the  present 
time,  there  are  among  others  in  Netherlands  engaged  in  the 
manufacture  of  this  preparation,  the  firm  of  C.  de  Koning  Tilly, 
who  claims  to  be  a  descendant  of  the  original  discoverer,  and 
a  corporation  successor  to  the  firm  of  G.  de  Koning  Tilly.  In- 
asmuch as  the  preparation  "Haarlem  Oil"  is  always  sold  under 
the  name  of  the  discoverer  "Tilly"  the  right  to  use  this  name 
especially  in  the  form  "de  Koning  Tilly"  is  of  great  practical 
value. 

The  first  mentioned  firm  registered  under  the  trade  mark  law 
the  word  trade  marks  "C.  de  Koning  Tilly's  Haarlem  Oil"  and 
"de  Koning  Tilly's  Haarlem  Qil."  Later  the  corporation  regis- 
tered trade  marks  under  the  trade  mark  law  which  contained 
among  other  features,  the  name  "G.  de  Koning  Tilly."  There- 
upon the  first  mentioned  firm  appealed  to  the  courts  for  the  can- 
cellation of  the  latter  registrations.  The  corporation  defended, 
upon  the  ground  that  it  could  not  be  forbidden  to  use,  in  a  trade 
mark,  the  name  of  its  predecessor  in  business.  The  court,  how- 
ever, decided  that  the  question  of  the  right  to  do  business  with 
the  use  of  the  name  "de  Koning  Tilly"  was  quite  distinct  from 
that  of  the  right  to  register  it  as  a  trade  mark.  The  only  matter 
at  issue  in  the  proceedings  for  cancellation  being  that  of  the  right 
to  use  the  name  as  a  trade  mark  upon  goods,  the  court  denied 
the  right  so  to  use  the  name,  holding  that  by  registration,  the 
firm  of  C.  de  Koning  Tilly  had  obtained  the  exclusive  right  to 
make  use  of  the  name  as  a  trade  mark.  While  the  corporation 
.could  do  business  under  a  corporate  name  which  includes  the 
words  "Formerly  G.  de  Koning  Tilly,"  it  must  not  use  the  words 
as  a  trade  mark  upon  its  goods. 

This  decision  indicates  the  importance,  under  the  law  of  the 
Netherlands,  of  registering  the  firm  or  trade  name  as  a  trade 
mark,  inasmuch  as  the  exclusive  right  to  the  use  of  that  name 


NETHERLANDS  353 

is  evidently  secured  thereby  to  the  registrant.  Thus  an  appar- 
ent defect  of  protection  to  trade  names  in  the  law  of  the  Nether- 
lands is  in  a  measure  supplied. 

Right  to  a  Name  in  the  Netherlands. 

Three  late  decisions  of  the  courts  of  Rotterdam  and  Amster- 
dam, relative  to  that  aspect  of  unfair  competition  which  consists 
in  the  unauthorized  use  of  a  name,  already  in  use  by  another  in 
the  like  business,  are  of  much  interest  and  importance  to  foreign 
traders  in  that  country.  In  the  two  cases  decided  by  the  Rotter- 
dam court,  the  plaintiffs  were  respectively  English  and  Ameri- 
can firms,  the  defendants  Dutch.  The  names  in  dispute  were 
"Singer"  for  sewing  machines,  and  "Gramophone  &  Typewriter 
Ltd."  In  each  of  these  cases,  judgment  was  given  for  the  de- 
fendant, upon  the  ground  that  the  Dutch  law  recognizes  no  abso- 
lute right  in  a  name.  The  Amsterdam  court,  on  the  other  hand, 
held  that  article  eight  of  the  Paris  convention  was  applicable, 
which  required  that  the  commercial  name  be  protected  in  all  the 
countries  of  the  union,  without  the  necessity  of  registration.  Ac- 
cordingly, the  use  of  the  name  "Bock  &  Co."  by  a  Dutch  firm 
upon  cigars  was  such  unfair  competition  toward  the  English 
owner  of  the  name  as  required  the  intervention  of  the  court  for 
its  suppression.  ( Markenschutz  und  Wettbewerb,  1910,  p.  275.) 

The  Singer  Trade  Name. 

The  high  court  of  the  Netherlands  has  defined  the  character 
of  the  protection  accorded  in  that  country  to  trade  names,  and 
specifically  has  passed  upon  the  status  of  the  trade  name 
"Singer"  as  applied  to  sewing  machines.  The  Singer  Manufac- 
turing Company  proceeded  against  a  competing  firm,  for  selling 
machines  not  of  the  plaintiffs'  manufacture  under  the  name  of 
"Singer."  The  defendant  maintained  that  the  name  as  applied 
to  sewing  machines  had  become  a  generic  term. 

The  controversy  having  reached  the  high  court,  this  tribunal 
holds  that,  generally  speaking,  there  is  no  right  to  a  firm  name 
as  such  in  the  Netherlands ;  that  accordingly,  it  is  not  a  violation 
of  the  rights  of  a  corporation  to  make  use  of  a  firm  name  em- 
ployed by  it.  The  only  way  in  which  a  firm  name  can  be  pro- 
tected in  the  Netherlands  is  to  register  it  as  a  trade  mark;  then 
it  becomes  entitled  to  protection  as  such,  and  the  registrant  may 
prevent  any  other  from  making  use  thereof.  This  right  can  be 
lost  only  in  the  manner  fixed  by  the  statute.  The  word  remains 
a  valid  trade  mark,  in  contemplation  of  law,  even  though,  with 
the  lapse  of  time,  it  may  become,  in  the  minds  of  the  public,  a 
generic  term.  A  mark  once  registered  and  protected  can  not 
become  in  law  a  generic  term  by  mere  length  of  use. 

23 


354  NETHERLANDS 

Trade  Names. 

The  Supreme  Court  of  the  Netherlands  has  rendered  a  de- 
cision relative  to  the  application  of  a  German  firm  for  registra- 
tion in  that  country.  The  firm  of  Friedrich  Herter  Abr.  Solin 
attempted  to  register  the  name  of  their  firm  with  the  words  "De 
Echte  Herter,"  that  is  "The  Genuine  Herter."  This  registra- 
tion was  refused  by  the  court  and  its  rejection  sustained  by  the 
Court  of  Appeals  and  subsequently  by  the  Supreme  Court,  upon 
the  ground  that  the  registration  of  the  words  'De  Echte  Herter" 
would  not  only  be  an  official  acknowledgment  of  the  standing  of 
the  firm,  but  would  stigmatize  the  other  numerous  firms  of  "the 
same  name  in  Germany  as  imitators  and  counterfeiters.  It  was 
held,  therefore,  that  the  registration  of  the  mark  would  be  con- 
trary to  public  order  and  in  violation  of  the  trade  mark  law  of 
the  country. 

Registration  of  Trade  Mark  by  an  Agent. 

A  very  interesting  decision  of  the  Bureau  of  Industrial  Prop- 
erty of  the  Netherlands  has  been  rendered.  The  resident  agent 
of  an  English  firm  undertook  to  register  in  that  country,  as  a 
trade  mark,  the  name  of  his  principal.  In  support  of  his  appli- 
cation, he  submitted  to  the  office  an  agreement  between  himself 
and  the  principal,  wherein  it  was  provided  that  the  trade  mark 
should  be  registered  in  the  Netherlands  and  her  colonies  in  the 
name  of  the  agent,  but  the  agent  bound  himself  to  transfer  the 
rights  acquired  by  such  registration  to  the  owners,  upon  the 
expiration  of  the  agreement  between  the  parties,  or  in  case  the 
relation  between  them  should  be  otherwise  terminated.  Not- 
withstanding the  terms  of  the  agreement,  the  office  refused  to 
register  the  mark  in  the  name  of  the  agent,  holding  that  once 
it  was  registered  by  the  agent,  his  principal,  in  spite  of  the  agree- 
ment, was  without  recourse  to  compel  the  agent  to  fulfill  its 
terms  and  transfer  the  mark  to  him.  The  only  remedy  that  the 
principal  would  have  would  be  an  action  for  damages  against 
the  agent,  to  indemnify  him  for  the  breach  of  the  contract,  but 
he  could  never  compel  the  cancellation  of  the  registered  mark. 

Assuming  the  position  taken  by  the  Bureau  to  be  correct,  to- 
wit :  That  notwithstanding  the  agreement,  the  principal  would 
not  enjoy  the  remedies  which  he  supposed,  but  would  be  power- 
less to  recover  his  mark  after  its  registration,  the  decision  dis- 
plays a  commendable  foresight  on  the  part  of  the  Bureau  in 
protecting  the  interest  of  the  foreign  house  against  the  possible 
disloyalty  of  its  agent.  The  decision  has  a  valuable  moral  for  the 
American  owners  of  trade  marks,  who  frequently  rely  upon 
agreements  of  this  kind  for  their  protection  in  foreign  countries, 
allowing  their  agents  under  such  agreements  to  register  the 
marks  in  their  own  name.  Certainly  in  the  light  of  this  decision, 


NEWFOUNDLAND  355 

that  course  should  never  be  taken,  unless  it  has  first  been  ascer- 
tained that  the  agreement  by  the  agent  to  assign  the  mark  upon 
demand,  is  one  that  can  be  enforced.  Even  then  the  owner 
should  not  lose  sight  of  the  fact  that  the  enforcement  of  such 
agreement,  against  an  unwilling  agent  is  always  a  matter  in- 
volving large  expense  and  considerable  trouble. 


NEWFOUNDLAND 

The  island  of  Newfoundland  is  a  self-governing  colony  dis- 
tinct from  the  Dominion  of  Canada.  The  estimated  area  of  the 
island  is  42,700  square  miles.  Labrador  has  an  area  of  about 
120,000  square  miles.  The  population  in  1911  was  estimated  at 
238,700;  Labrador,  5,000.  The  government  which  extends  over 
the  territory  of  Labrador,  is  carried  on  by  a  governor,  assisted 
by  an  executive  council  of  9  members,  a  legislative  council  of 
18  members  and  a  house  of  assembly  of  36  members. 

MONEY— 1  dollar  (100  cents  )=4s.  2d.=l  dollar  U.  S. 

WEIGHTS  AND  MEASURES — Same  as  Great  Britain. 

Law. 
Chapter  112. 

Duration. 
Indefinite. 

Requirements. 

Power  of  attorney ;  declaration,  legalized  by  British  Consul  and 
six  copies  of  the  mark. 

What  May  Be  Registered. 

(1)  For  the  purposes  of  this  chapter,  a  trade  mark  must  con- 
sist of  or  contain  at  least  one  of  the  following  essential  particu- 
lars: 

(a)  A  name  of  an  individual  or  firm  printed,  impressed  or 
woven  in  some  particular  or  distinctive  manner;  or  (6)  A  writ- 
ten signature  or  copy  of  a  written  signature  of  the  individual  or 
firm  applying  for  registration  thereof  as  a  trade  mark;  or  (c)  A 
distinctive  device,  mark,  brand,  heading,  label  or  ticket;  or  (d) 
An  invented  word  or  invented  words;  or  (e)  A  word  or  words 
having  no  reference  to  the  character  or  quality  of  the  goods,  and 
not  being  a  geographical  name. 

(2)  There  may  be  added  to  any  one  or  more  of  the  essential 
particulars  mentioned  in  this  section,  any  letters,  words  or  figures, 
or  of  any  of  them ;  but  the  applicant  for  registration  of  any  such 
additional  matter  must  state  in  his  application  the  essential  par- 
ticulars of  the  trade  mark,  and  must  disclaim  in  his  application 


356  NEWFOUNDLAND 

any  right  to  the  exclusive  use  of  the  added  matter,  and  a  copy 
of  the  statement  and  disclaimer  shall  be  entered  on  the  register. 

(3)  Provided  as  follows:  (a)  A  person  need  not  under  this 
section  disclaim  his  own  name  or  the  foreign  equivalent  thereof, 
or  his  place  of  business;  but  no  entry  of  any  such  name  shall 
affect  the  right  of  any  owner  of  the  same  name  to  use  that  name 
or  the  foreign  equivalent  thereof; 

(b)  Any  special  and  distinctive  word  or  words,  letter,  figure 
or  combination  of  letters  or  figures,  or  of  letters  and  figures  used 
as  a  trade  mark  before  the  coining  into  force  of  these  Consoli- 
dated Statutes,  may  be  registered  as  a  trade  mark  under  this 
chapter.  (Art.  20.) 

A  trade  mark  must  be  registered  for  particular  goods  or  classes 
of  goods.  (Art.  21.) 

Assignment. 

Every  trade  mark  duly  registered  shall  be  assignable  in  law, 
and  on  the  assignment  being  produced,  and  the  fee  hereinbefore 
prescribed  being  paid,  the  Colonial  Secretary  shall  cause  the  name 
of  the  assignee,  with  the  date  of  the  assignment  and  such  other 
details  as  he  shall  see  fit,  to  be  entered  on  the  margin  of  the 
register  of  trade  marks,  on  the  folio  where  such  trade  mark  is 
registered.  (Art.  29.) 

In  practice  the  assignment  should  be  forwarded  in  duplicate, 
one  copy  to  be  filed,  and  one  certified  and  returned. 

Where  an  assignment  covers  two  or  more  trade  marks,  three 
or  more  duplicate  originals  should  be  sent,  one  for  return,  and 
one  to  file  with  each  trade  mark. 

Offenses,  Penalties  and  Procedure. 

(1)  Every  person  who — (a)  Forges  any  trade  mark;  or  (b)' 
Falsely  applies  to  goods  any  trade  mark,  or  any  mark  so  nearly 
resembling  a  trade  mark  as  to  be  calculated  to  deceive;  or  (c} 
Makes  any  die,  block,  machine  or  other  instrument  for  the  pur- 
pose of  forging,  or  of  being  used  for  forging,  a  trade  mark ;  or 
(d)   Applies  any  false  trade  description  to  goods;  or  (e)   Dis- 
poses of,  or  has  in  his  possession,  any  die,  block,  machine,  or 
other  intrument  for  the  purpose  of  forging  a  trade  mark ;  or 
(f)  Causes  any  of  the  things  above  in  this  section  mentioned  to 
be  done;  shall,  subject  to  the  provisions  of  this  chapter,  and  un- 
less he  proves  that  he  acted  without  intent  to  defraud,  be  guilty 
of  any  offense  against  this  chapter. 

(2)  Every  person  who  sells,  or  exposes  for  sale,  or  has  in  his 
possession  for  sale,  or  for  any  purpose  of  trade  or  manufacture, 
any  goods  or  things  to  which  any  forged  trade  mark  or  false 
trade  description  is  applied,  or  to  which  any  trade  mark,  or  mark 
so  nearly  resembling  a  trade  mark  as  to  be  calculated  to  deceive, 
is  falsely  applied,  as  the  case  may  be,  shall  be  guilty  of  an  offense 


NEWFOUNDLAND  357 

against  this  chapter,  unless  he  proves — (a)  That  having  taken 
all  reasonable  precautions  against  committing  an  offense  against 
this  chapter,  he  had,  at  the  time  of  the  commission  of  the  alleged 
offense,  no  reason  to  suspect  the  genuineness  of  the  trade  mark, 
mark,  or  trade  description;  and  (b)  That  on  demand  made  by, 
or  on  behalf  of  the  prosecutor,  he  gave  all  information  in  his 
power  with  respect  to  the  persons  from  whom  he  obtained  such 
goods  or  things;  or  (c)  That  otherwise  he  had  acted  innocently. 
(3)  Every  person  guilty  of  an  offense  against  this  chapter 
shall  be  liable — (a)  On  conviction  on  indictment  to  imprisonment, 
with  or  without  hard  labor,  for  a  term  not  exceeding  two  years, 
or  to  fine,  or  to  both  imprisonment  and  fine;  and  (b)  On  sum- 
mary conviction  to  imprisonment,  with  or  without  hard  labor,  for 
a  term  not  exceeding  four  months,  or  to  a  fine  not  exceeding 
$100;  and  in  the  case  of  a  second  or  subsequent  conviction  to 
impris'onment,  with  or  without  hard  labor,  for  a  term  not  ex- 
ceeding six  months,  or  to  a  fine  not  exceeding  $200 ;  and  (c)  In 
any  case,  to  forfeit  to  Her  Majesty  every  chattel,  article,  instru- 
ment, or  thing,  by  means  of  or  in  relation  to  which  the  offense 
has  been  committed,  (d)  The  Court  before  which  any  person  is 
convicted  under  this  section  may  order  any  forfeited  articles 
to  be  destroyed,  or  otherwise  disposed  of,  as  the  Court  thinks 
fit.  (#)  If  any  person  feels  aggrieved  by  any  conviction  made 
by  a  Court  of  summary  jurisdiction,  he  may  appeal  therefrom  to 
the  Supreme  Court.  (/)  Any  offense  for  which  a  person  is, 
under  this  chapter,  liable  to  punishment  on  summary  conviction, 
may  be  prosecuted,  and  any  article  liable  to  be  forfeited  under  this 
chapter  by  a  Court  of  summary  jurisdiction,  may  be  forfeited ; 
Provided  that  a  person  charged  with  an  offense  under  this  sec- 
tion, before  a  Court  of  summary  jurisdiction,  shall  on  appearing 
before  the  Court,  and  before  the  charge  is  gone  into,  be  informed 
of  his  right  to  be  tried  on  indictment,  and  if  he  requires,  to  be 
tried  accordingly.  (Art.  1.) 

Fees. 

Before  any  action  is  taken  in  relation  to  an  application  for 
registering  a  trade  mark,  the  following  fees  shall  be  paid  to  the 
Colonial  Secretary,  that  is  to  say : 

On  every  application  to  register  a  trade  mark,  in- 
cluding  certificate $20.00 

For  the  recording  of  an  assignment 1.00 

Such  fees  to  be  paid  by  the  Colonial  Secretary  to  the  Receiver 
General  for  the  use  of  the  colony. 

If  the  Colonial  Secretary  refuses  to  register  the  trade  mark 
for  which  application  is  made,  the  fee  shall  be  returned  to  the 
applicant  or  his  agent,  less  five  dollars,  which  shall  be  retained 
as  compensation  for  office  expenses. 

Marking  Goods:  "Trade  Mark  Registered." 


358  NEW  ZEALAND 


NEW  ZEALAND 

The  Dominion  of  New  Zealand  comprises  two  large  islands, 
known  as  the  North  and  South  Islands,  with  one  of  smaller  size 
called  Stewart  Island.  The  islands  form  one  extended  line  for 
a  distance  of  nearly  1,200  miles;  their  average  breadth  is  about 
120  miles,  but  no  part  is  anywhere  more  distant  than  75  miles 
from  the  coast.  There  are  a  number, of  outlying  islands  in- 
cluded within  the  boundaries  of  the  Dominion,  the  Cathams, 
Rarotonga  and  Niue  being  the  most  important.  Their  area  is 
nearly  105,000  square  miles,  equal  to  that  of  Great  Britain  and 
Ireland.  Population,  1,417,952. 

An  interesting  industry  of  the  country  is  the  collecting  of 
Kauri  gum,  which  is  formed  of  the  turpentine  that  has  exuded 
from  the  Kauri  tree.  This  gum  is  found  only  in  the  Auckland 
provincial  district  and  is  collected  mostly  from,  or  near  the  sur- 
face of  the  ground,  and  gives  employment  to  4,000  or  5,000  peo- 
ple. The  gum  is  used  principally  in  the  manufacture  of  high 
class  varnish. 

MONEY,  WEIGHTS  AND  MEASURES — Same  as  Great  Britain. 

Laws. 

Trade  Mark  Act  of  1911  went  into  force  on  the  first  day  of 
July,  1912. 

Duration. 

Fourteen  years;  renewable  every  fourteen  years. 

Renewal. 

At  any  time  not  less  than  four  months  and  not  more  than  six 
months  before  the  expiration  of  the  last  registration  of  a  trade 
mark  any  person  may  leave  at  the  Office  a  fee  for  the  renewal  of 
the  registration  of  the  mark  upon  the  form  No.  10.  Such  person 
shall  endorse  upon  such  form  his  name  and  address,  and  before 
taking  any  further  step  the  Registrar  may  require  such  person 
to  furnish,  within  such  time  as  he  may  allow,  an  authority  to 
pay  such  fee  signed  by  the  registered  proprietor,  and,  if  such 
person  does  not  furnish  such  authority,  may  return  such  fee  and 
treat  it  as  not  received. 

When  he  does  not  require  such  authority  the  Registrar  shall, 
upon  receipt  of  such  fee,  communicate  with  the  registered  pro- 
prietor at  his  registered  address,  stating  that  the  fee  has  been 
received  and  that  the  registration  will  in  due  course  be  renewed. 

At  a  date  not  less  than  three  months  and  not  more  than  four 
months  before  the  expiration  of  the  last  registration  of  a  mark, 
if  no  renewal  fee  has  been  received  as  aforesaid,  the  Registrar 


NEW  ZEALAND  359 

shall  send  to  the  registered  proprietor  at  his  registered  address 
a  notice  in  the  form  No.  11. 

At  a  time  not  less  than  fourteen  days  and  not  more  than 
twenty-eight  days  before  the  expiration  of  the  last  registration 
of  a  mark,  the  Registrar  shall,  if  no  renewal  fee  has  been  re- 
ceived, send  a  notice  to  the  registered  proprietor  at  his  registered 
address  in  the  form  No.  12. 

If  at  the  date  of  the  expiration  of  the  last  registration  of  a 
mark  the  renewal  fee  has  not  been  paid,  the  Registrar  shall  ad- 
vertise the  fact  forthwith  in  the  Journal,  and  if  within  one  month 
of  such  advertisement  the  renewal  fee,  together  with  an  addi- 
tional fee  of  10s.,  is  received,  he  may  renew  the  registration 
without  removing  the  mark  from  the  register. 

Where  after  one  month  from  such  advertisement  such  fees 
have  not  been  paid,  the  Registrar  may  remove  the  mark  from 
the  register  as  of  the  date  of  the  expiration  of  the  last  registra- 
tion, but  may  upon  payment  of  the  renewal  fee,  together  with 
an  additional  fee  of  £1,  restore  the  mark  to  the  register  if  satis- 
fied that  it  is  just  so  to  do,  and  upon  such  conditions  as  he  may 
think  fit  to  impose. 

Where  a  trade  mark  has  been  removed  from  the  register  the 
Registrar  shall  cause  to  be  entered  in  the  register  a  record  of 
such  removal  and  of  the  cause  thereof. 

Upon  the  renewal  of  a  registration  a  notice  to  that  effect  shall 
be  sent  to  the  registered  proprietor  at  his  registered  address,  and 
the  renewal  shall  be  advertised  in  the  Journal. 

Registrable  Trade  Marks. 

The  Registrar  may  refuse  to  accept  any  application  upon  which 
the  following  appear: 

(a)  The  words  "Patent,"  "Patented,"  or  "By  Royal  Letters 
Patent,"  "Registered,"  "Registered  design,"  "Copyright,"  ''En- 
tered at  Stationers'  Hall,"  "To  counterfeit  this  is  forgery,"  or 
words  to  like  effect. 

(&)  Representations  of  Their  Majesties  or  of  any  member 
of  the  Royal  Family. 

(c)  The  device  of  the  Geneva  Red  Cross,  or  of  the  words 
"Red  Cross." 

Representations  of  the  Royal  Arms  or  Royal  Crests,  or  arms 
or  crests  so  nearly  resembling  them  as  to  lead  to  mistake,  or  of 
British  Royal  crowns,  or  of  the  British  national  flags,  or  of  the 
word  "Royal,"  or  any  other  words,  letters,  or  devices  calculated 
to  lead  persons  to  think  that  the  applicant  has  Royal  patronage 
or  authorization,  may  not  appear  on  trade  marks  the  registra- 
tion of  which  is  applied  for:  Provided  always  that  nothing  in 
this  regulation  shall  preclude  the  Registrar  from  allowing  the 
registration  as  an  "old  mark"  (that  is,  as  a  mark  which  was  used 


360  NEW  ZEALAND 

by  the  applicant  or  his  predecessors  in  business  before  the  1st  of 
January,  1890)  of  any  mark  which  was  capable  of  being  so  reg- 
istered before  the  Patents,  Designs  and  Trade  Marks  Act,  1911, 
came  into  operation. 

Where  representations  of  the  arms  of  a  foreign  state  or  place 
appear  on  a  mark  the  Registrar  may  call  for  such  justification 
as  he  may  deem  necessary  for  their  use. 

Where  a  representation  of  the  arms  or  emblems  of  any  city, 
borough,  town,  place,  society,  body  corporate,  or  institution  ap- 
pears on  a  mark,  the  applicant  shall,  if  so  required,  furnish  the 
Registrar  with  a  consent  from  such  official  as  the  Registrar  may 
consider  entitled  to  give  consent  to  the  use  of  such  arms  or 
emblems. 

Where  the  names  or  representations  of  living  persons  appear 
on  a  trade  mark,  the  Registrar  shall,  if  he  so  requires,  be  fur- 
nished with  consents  from  such  persons  before  proceeding  to 
register  the  mark.  In  the  case  of  persons  recently  dead  the 
Registrar  may  call  for  consents  from  their  legal  representatives 
before  proceeding  with  registration  of  a  trade  mark  on  which 
their  names  or  representations  appear. 

Where  the  name  or  a  description  of  any  goods  appears  on  a 
trade  mark  the  Registrar  may  refuse  to  register  such  mark  in 
respect  of  any  goods  other  than  the  goods  so  named  or  described. 

Where  the  name  or  description  of  any  goods  appears  on  a 
trade  mark  which  name  or  description  in  use  varies,  the  Regis- 
trar may  permit  the  registration  of  the  mark  with  the  name  or 
description  upon  it  for  goods  other  than  those  named  or  described, 
the  applicant  stating  in  his  application  that  the  name  or  descrip- 
tion varies. 

Application  for  Registration. 

If  application  for  registration  of  a  trade  mark  is  made  by  a 
firm  or  partnership,  it  may  be  signed  in  the  name  or  for  and  on 
behalf  of  the  firm  or  partnership  by  any  one  or  more  members 
thereof. 

If  the  application  is  made  by  a  body  corporate,  it  may  be 
signed  by  a  director  or  by  the  secretary  or  other  principal  officer 
of  such  body  corporate. 

Any  application  may  be  signed  by  an  agent. 

On  or  after  receipt  of  the  application  the  Registrar  shall  fur- 
nish the  applicant  with  an  acknowledgment  thereof. 

The  Registrar  may  allow  an  application  for  a  trade  mark,  al- 
though not  in  accordance  with  the  said  Act  and  these  regula- 
tions, to  be  left  on  such  terms  and  conditions  as  he  thinks  fit, 
and  in  any  such  case  shall  require  the  applicant  to  comply  with 
the  requirements  of  these  regulations  within  a  time  to  be  speci- 
fied by  him  in  that  behalf.  No  further  action  need  be  taken  by 


NEW  ZEALAND  361 

the  Registrar  in  respect  of  that  application  until  the  prescribed 
requirements  are  complied  with. 

Where  application  is  made  to  register  a  trade  mark  which  was 
used  by  the  applicant  or  his  predecessors  in  business  before  the 
1st  of  January,  1890,  the  application  shall  contain  a  statement 
of  the  time  during  which  and  by  whom  it  has  been  used  in  re- 
spect of  the  goods  mentioned  in  the  application.  The  Registrar 
may  require  a  statutory  declaration  verifying  such  user  with  ex- 
hibits showing  the  mark  as  used. 

Every  application  for  registration  of  a  trade  mark  shall  contain 
a  representation  of  the  mark  affixed  to  the  application,  and  shall 
be  accompanied  by  four  additional  representations  of  the  mark. 
Where  the  representations  are  of  such  size  that  they  require  to 
be  folded  they  shall  be  mounted  on  linen  or  tracing  cloth. 

The  Registrar,  if  dissatisfied  with  any  representation  of  a 
mark,  may  at  any  time  require  another  representation  satisfactory 
to  him  to  be  substituted  before  proceeding  with  the  application. 

Where  a  drawing  or  other  representation  or  specimen  cannot 
be  given  in  manner  aforesaid,  a  specimen  or  copy  of  the  trade 
mark  may  be  sent  either  of  full  size  or  on  a  reduced  scale,  and 
in  such  form  as  the  Registrar  thinks  most  convenient. 

The  Registrar  may  also,  in  exceptional  cases,  deposit  in  the 
Office  a  specimen  or  copy  of  any  trade  mark  which  cannot  con- 
veniently be  shown  by  a  representation,  and  may  refer  thereto 
in  the  register  in  such  manner  as  he  thinks  fit. 

WThen  application  is  made  for  the  registration  of  a  series  of 
trade  marks  a  representation  of  each  trade  mark  of  the  series 
shall  be  affixed,  as  aforesaid,  to  the  application. 

When  a  trade  mark  contains  a  word  or  words  in  other  than 
Roman  characters,  there  shall  be  indorsed  on  the  application  a 
sufficient  transliteration  and  translation  to  the  satisfaction  of 
the  Registrar  of  each  of  such  words,  and  every  such  indorse- 
ment shall  be  signed  by  the  applicant  or  his  agent. 

Where  a  trade  mark  contains  a  word  or  words  in  a  language 
other  than  English,  the  Registrar  may  ask  for  an  exact  transla- 
tion thereof ;  if  he  so  requires,  such  translation  shall  be  indorsed 
and  signed  as  aforesaid. 

Procedure. 

Upon  receipt  of  an  application  for  registration  the  Registrar 
shall  cause  a  search  to  be  made  amongst  the  registered  marks 
and  pending  applications  for  the  purpose  of  ascertaining  whether 
there  are  on  record  any  marks  for  the  same  goods  or  description 
of  goods  identical  with  the  mark  applied  for,  or  so  nearly  re- 
sembling it  as  to  be  calculated  to  deceive. 

If  after  such  search  and  a  consideration  of  the  application 
the  Registrar  thinks  there  is  no  objection  to  the  mark  being  reg- 
istered, he  may  accept  it  absolutely,  or  subject  to  conditions, 


362  NEW  ZEALAND 

amendments  and  modifications  which  he  shall  communicate  to 
the  applicant  in  writing. 

If  after  such  search  and  consideration  of  the  application  any 
objections  appear,  a  statement  of  those  objections  shall  be  sent 
to  the  applicant  in  writing,  and  unless  within  such  time  as  may  be 
allowed,  he  takes  steps  to  meet  such  objections,  he  shall  be 
deemed  to  have  withdrawn  his  application. 

If  the  Registrar  accepts  an  application  subject  to  any  condi- 
tions, amendments  or  modifications,  and  the  applicant  objects  to 
such  conditions,  amendments  or  modifications,  he  shall,  within 
such  time  as  may  be  allowed,  communicate  his  objections  to  the 
Registrar  either  personally  or  by  letter ;  and  if  he  does  not  do  so 
he  shall  be  deemed  to  have  withdrawn  his  application.  If  the 
applicant  does  not  object  to  such  conditions,  amendments  or  mod- 
ifications he  shall  forthwith  notify  the  Registrar  in  writing. 

The  decision  of  the  Registrar  with  respect  to  such  objections 
as  aforesaid  shall  be  communicated  to  the  applicant  in  writing, 
and  if  he  objects  to  such  decision  he  may  within  such  time  as  may 
be  allowed,  require  the  Registrar  to  state  in  writing  the  grounds 
of  his  decision  and  the  materials  used  by  him  in  arriving  at  the 
same. 

Upon  receipt  of  such  request  the  Registrar  shall  send  to  the 
applicant  such  statement  as  aforesaid  in  writing,  and  the  date 
when  such  statement  is  sent  shall  be  deemed  to  be  the  date  of 
the  Registrar's  decision  for  the  purpose  of  appeal. 

The  Registrar  may  call  on  an  applicant  to  insert  in  his  ap- 
plication such  disclaimer  as  the  Registrar  may  think  fit,  in  order 
that  the  public  generally  may  understand  what  the  applicant's 
rights,  if  his  mark  is  registered,  will  be. 

Every  application,  when  accepted,  shall  be  advertised  by  the 
Registrar  in  the  Journal  during  such  times  and  in  such  manner 
as  the  Registrar  directs.- 

If  no  representation  of  the  trade  mark  is  inserted  in  connec- 
tion with  the  advertisement  of  an  application,  the  Registrar  shall 
refer  in  such  advertisement  to  the  place  or  places  where  a  speci- 
men or  representation  of  the  trade  mark  is  deposited  for  exhi- 
bition. 

For  the  purposes  of  such  advertisement  the  applicant  may  be 
required  to  furnish  a  wood  block  or  electrotype  (or  more  than 
one  if  necessary)  of  the  trade  mark  of  such  dimensions  as  may 
from  time  to  time  be  directed  by  the  Registrar,  or  such  other 
information  or  means  of  advertising  the  trade  mark  as  may  be 
required  by  the  Registrar;  and  the  Registrar,  if  dissatisfied  with 
the  block  or  electrotype  furnished  by  the  applicant  or  his  agent, 
may  require  a  fresh  block  or  electrotype  before  proceeding  with 
the  advertisement. 

When  an  application  relates  to  a  series  of  trade  marks  differing 
one  from  another,  the  applicant  may  be  required  to  furnish  a 


NEW  ZEALAND  363 

wood  block  or  electrotype  (or  more  than  one  if  necessary)  of  any 
or  of  each  of  the  trade  marks  constituting  the  series;  or  the 
Registrar  may,  if  he  thinks  fit,  insert  with  the  advertisement  of 
the  application  a  statement  of  the  manner  in  respect  of  which 
the  several  trade  marks  differ  from  one  another. 

Opposition. 

Any  person  may,  within  two  months  from  the  date  of  any  ad- 
vertisement in  the  Journal  of  an  application  for  registration  of  a 
trade  mark,  give  notice  in  writing  at  the  Office  of  opposition  to 
the  registration. 

Such  notice  shall  be  in  the  form  No.  4  and  shall  contain  a 
statement  of  the  grounds  upon  which  the  opponent  objects  to  the 
registration.  If  registration  is  opposed  on  the  ground  that  the 
mark  resembles  marks  already  on  the  register,  the  numbers  of 
such  marks  and  the  numbers  of  the  Gazettes  or  Journals  in  which 
they  have  been  advertised  shall  be  set  out.  Such  notice  shall 
be  accompanied  by  a  duplicate  which  the  Registrar  shall  forth- 
with send  to  the  applicant. 

Within  two  months  from  the  receipt  of  such  duplicate  the 
applicant  shall  send  to  the  Registrar  a  counter-statement  in  the 
form  No.  5,  setting  out  jthe  grounds  on  which  he  relies  as  sup- 
porting his  application.  The  applicant  shall  also  set  out  what 
facts,  if  any,  alleged  in  the  notice  of  opposition  he  admits.  Such 
counter-statement  shall  be  accompanied  by  a  duplicate  in  writing. 

Upon  receipt  of  such  counter-statement  and  duplicate  the 
Registrar  will  forthwith  send  the  duplicate  to  the  opponent, 
and  within  one  month  from  the  receipt  of  the  duplicate  the  oppo- 
nent shall  leave  at  the  office  such  evidence  by  way  of  statutory 
declaration  as  he  may  desire  to  adduce  in  support  of  his  opposi- 
tion and  shall  deliver  to  the  applicant  copies  thereof. 

If  an  opponent  leaves  no  evidence  he  shall  be  deemed  to  have 
abandoned  his  opposition,  but  if  he  does,  then  within  one  month 
from  the  receipt  of  the  copies  of  declaration  the  applicant  shall 
leave  at  the  office  such  evidence  by  way  of  statutory  declaration 
as  he  desires  to  adduce  in  support  of  his  application,  and  shall 
deliver  to  the  opponent  copies  thereof. 

Within  fourteen  days  from  the  receipt  by  the  opponent  of  the 
copies  of  the  applicant's  declaration  the  opponent  may  leave  at 
the  office  evidence  by  statutory  declaration  in  reply,  and  shall 
deliver  to  the  applicant  copies  thereof.  Such  evidence  shall 
be  confined  to  matters  strictly  in  reply. 

In  any  proceedings  before  the  Registrar  he  may  at  any  time, 
if  he  thinks  fit,  give  leave  to  either  the  applicant  or  the  oppo- 
nent to  file  any  evidence  upon  such  terms  as  to  costs  or  otherwise 
as  the  Registrar  may  think  fit. 

Where  there  are  exhibits  to  declarations  filed  in  an  opposi- 
tion, copies  or  impressions  of  such  exhibits  shall  be  sent  to  the 


364  NEW  ZEALAND 

other  party  on  his  request;  or,  if  such  copies  or  impressions  can 
not  conveniently  be  furnished,  the  originals  shall  be  sent  to  the 
office,  so  that  they  may  be  open  to  inspection.  The  original 
exhibits  shall  be  produced  at  the  hearing,  unless  the  Registrar 
otherwise  directs. 

Upon  completion  of  the  evidence  the  Registrar  shall  give 
notice  to  the  parties  of  a  date  when  he  will  hear  the  arguments 
in  the  case. 

Such  appointment  shall  be  for  a  date  at  least  three  weeks  after 
the  date  of  the  notice,  unless  the  parties  consent  to  a  shorter 
notice. 

Within  seven  days  from  the  receipt  of  such  notice  both  parties 
shall  file  an  application  in  the  form  No.  6.  A  party  who 
receives  such  notice  and  who  does  not,  within  seven  days  from 
the  receipt  thereof,  give  notice  on  the  said  form  No.  6  that  he 
intends  to  appear,  may  be  treated  as  not  desiring  to  be  heard, 
and  the  Registrar  may  act  accordingly. 

The  hearing  shall  be  in  Wellington,  except  where  the  parties 
intimate  to  the  Registrar,  at  least  fourteen  days  before  the  time 
appointed  for  the  hearing,  that  it  is  their  desire  that  it  shall  be 
held  elsewhere  in  New  Zealand.  On  receipt  of  such  intimation, 
and  on  payment  of  such  sum  to  cover  expenses  as  he  thinks  fit, 
the  Registrar  may,  in  his  discretion,  hear  the  case  at  such  other 
place  in  New  Zealand  as  the  parties  thereto  may  mutually  desire. 

Where  in  opposition  proceedings  any  extension  of  time  is 
granted  to  any  party,  the  Registrar  may  thereafter,  if  he  thinks 
fit,  without  giving  the  said  party  a  hearing,  grant  any  reasonable 
extension  of  time  to  the  other  party  in  which  to  take  any  sub- 
sequent step. 

Where  a  party  giving  notice  of  opposition  neither  resides  nor 
carries  on  business  in  New  Zealand,  the  Registrar  may  call 
upon  him  to  give  a  security,  in  such  form  as  the  Registrar  may 
deem  sufficient,  for  the  costs  of  the  proceedings  before  the  Reg- 
istrar, for  such  amount  as  the  Registrar  thinks  fit,  and  at  any 
stage  in  such  opposition  may  require  further  security  to  be  given 
at  any  time  before  giving  his  decision  in  the  case. 

Non-Completion. 

Where  registration  of  a  trade  mark  is  not  completed  within 
twelve  months  from  the  date  of  the  application  by  reason  of  de- 
fault on  the  part  of  the  applicant,  the  Registrar  shall  give  notice 
to  the  applicant  in  writing  of  such  non-completion,  and  if  the 
applicant  has  an  agent,  shall  send  a  duplicate  of  such  notice  to 
such  agent.  If  after  fourteen  days  from  the  date  when  such 
notice  was  sent  the  registration  is  not  completed,  the  applica- 
tion shall  be  deemed  to  be  abandoned,  but  the  Registrar  may 
with  such  notice,  where  the  applicant  lives  at  a  distance,  give  a 
further  time  after  such  fourteen  days  for  the  completion  of 
such  application. 


NEW  ZEALAND  365 

Convention  Applications. 

Every  application  for  the  registration  of  a  trade  mark  (here- 
inafter referred  to  as  a  convention  application)  shall  contain  a 
declaration  that  foreign  application  has  been  made  for  the  pro- 
tection of  the  trade  mark  to  which  the  convention  application 
relates,  and  shall  specify  the  country  or  countries  in  which  such 
foreign  applications  have  been  made,  and  the  official  date  or 
dates  of  those  applications  respectively. 

A  copy  of  the  said  trade  mark,  duly  certified  by  the  official 
chief  or  head  of  the  Patent  Office  in  the  country  in  which  the 
first  foreign  application  was  made,  or  otherwise  verified  to  the 
satisfaction  of  the  Registrar,  must  be  left  at  the  office  at  the 
same  time  as  the  application,  or  within  such  further  time  there- 
after as  the  Registrar  may  allow. 

Assignment. 

The  Registrar  may,  on  request  made  jointly  by  a  registered 
proprietor  of  a  mark  and  the  person  to  whom  he  has  assigned 
such  mark,  together  with  the  good  will  of  the  business  con- 
cerned in  the  goods  for  which  it  has  been  registered,  register  the 
assignee  as  proprietor  of  the  mark.  Such  application  shall  be  in 
the  form  No.  14.  If  the  registrar  so  requires,  the  assignee  shall 
furnish  a  declaration  in  the  form  No.  15. 

Where  no  such  joint  request  is  made,  any  person  who  has  be- 
come entitled  to  a  registered  trade  mark  by  assignment,  trans- 
mission, or  other  operation  of  the  law,  may  leave  a  request  at 
the  office  for  the  entry  of  his  name  in  the  register  as  proprietor 
of  such  trade  mark.  The  request  shall  be  on  the  form  No.  16 
and  such  request  shall  contain  the  name,  address  and  descrip- 
tion of  the  person  claiming  to  be  entitled  to  the  trade  mark 
(hereinafter  called  the  "claimant."). 

Together  with  such  request  the  claimant  shall  leave  a  case 
stating  full  particulars  of  the  assignment,  transmission,  or  other 
operation  of  law,  by  virtue  of  which  he  claims  to  be  entitled  to 
be  entered  in  the  register  as  proprietor  of  the  trade  mark,  so  as 
to  show  the  manner  in  which  and  the  person  or  persons  to  whom 
the  trade  mark  has  been  assigned  or  transmitted,  and  so  as  to 
show  further  that  it  has  been  so  assigned  or  transmitted  in  con- 
nection with  the  good  will  of  the  business  concerned  in  the 
goods  for  which  the  trade  mark  has  been  registered. 

Such  request  shall,  in  the  case  of  an  individual,  be  made  and 
signed  by  the  claimant,  and  in  the  case  of  a  firm  or  partnership, 
by  one  or  more  members  of  such  firm  or  partnership,  and  in  the 
case  of  a  body  corporate  shall  be  signed  by  a  director  or  by  the 
secretary  or  other  principal  officer  of  such  body  corporate. 

If  the  Registrar  determines  that  the  case  sets  out  particulars 
such  as  entitle  the  claimant  to  be  registered  as  proprietor  of 


366  NEW  ZEALAND 

such  trade  mark,  he  shall  call  upon  the  claimant  to  furnish  a 
statutory  declaration  in  the  form  No.  17,  verifying-  the  several 
statements  in  the  case  and  declaring  that  the  particulars  given 
comprise  every  material  fact  and  document  affecting  the  pro- 
prietorship of  the  trade  mark  claimed  by  such  request. 

In  any  case  the  Registrar  may  call  on  any  person  who  desires 
to  be  registered  as  proprietor  of  a  trade  mark  for  such  proof  or 
additional  proof  of  title  and  of  the  existence  and  ownership  of 
such  good-will  as  aforesaid  as  the  Registrar  may  require  for 
his  satisfaction. 

Fees. 

i      s.     d. 
On  application  not  otherwise  charged  to  register  a  trade 

mark,  for  one  or  more  articles  included  in  one  class.   0     10     0 
On   application   not   otherwise  charged   to   register   a 
series  of  trade  marks,  for  one  or  more  articles  in- 
cluded in  one  class 0     10     0 

On  notice  of  opposition  for  each  application  opposed 

by  opponent    1       0     0 

On  filing  a  counter-statement  in  answer  to  a  notice  of 
opposition  by  the  applicant,  for  each  application  op- 
posed    0  10  0 

On  the  hearing  of  each  opposition,  by  applicant  and  by 

opponent,  respectively 1       0     0 

For  registration  of  a  trade  mark,  for  one  or  more  arti- 
cles included  in  one  class 1  0  0 

For  registration  of  a  series  of  marks,  for  one  or  more 
articles  included  in  one  class — 

For  the  first  mark 1       0     0 

And  for  every  other  mark  of  the  series 0       5     0 

Upon  each  entry  in  the  register  of  a  mark  of  a  note 
that  the  mark  is  associated  with  a  newly  registered 

mark ". 0       1     0 

On  application  to  register  a  subsequent  proprietor  in 

cases  of  assignment  or  transmission  of  a  single  mark  1       00 
On  application  to  register  a  subsequent  proprietor  of 
more  than  one  mark  standing  in  the  same  name,  the 
devolution  of  title  being  identical  in  each  case — 

For  the  first  mark 1       0     0 

And  for  every  other  mark 0       2     0 

On  application  to  change  the  name  of  a  proprietor  of  a 
single  mark  where  there  has  been  no  alteration  in  the 

proprietorship   0       5     0 

On  application  to  change  the  name  of  a  proprietor  of 
more  than  one  mark  standing  in  the  same  name,  the 
change  being  the  same  in  each  case — 

For  the  first  mark 0       5     0 

And  for  every  other  mark 0       1     0 


NEW  ZEALAND  367 

£     s.     d. 
For  renewal  of  registration  of  a  mark  at  expiration  of 

last  registration    1       o     0 

For  renewal  of  registration  of  a  series  of  marks  at  the 
expiration  of  last  registration — 

For  the  first  mark  of  the  series 1       0     0 

And  for  every  other  mark  of  the  series 0       2     0 

For  altering  a  single  entry  of  the  address  of  a  regis- 
tered proprietor  0  5  0 

For  altering  more  than  one  entry  of  the  address  of  a 
registered  proprietor  where  the  address  in  each  case 
is  the  same  and  is  altered  in  the  same  way — 

For  the  first  entry 0       5     0 

And  for  every  other  entry 0       1     0 

For  every  entry  in  the  register  of  a  rectification  thereof 

or  an  alteration  therein,  not  otherwise  charged.  ...   0     10     0 
For  cancelling  the  entry  or  part  of  the  entry  of  a  trade 
mark  upon  the  register  on  the  application  of  the 

owner  of  such  trade  mark 0       5     0 

For  certificate  of  Registrar 0       5     0 

On  appeal  to  the  court  from  any  decision  of  the  Reg- 
istrar    1  0  0 

On  application  to  the  Registrar  for  leave  to  add  to  or 
alter  more  than  one  mark  of  the  same  proprietor,  the 
addition  or  alteration  to  be  made  in  each  case  being 
the  same — 

For  the  first  mark 1       0     0 

And  for  every  other  mark 0     10     0 

For  inspecting  register  or  file  in  connection  with  any 

particular  trade  mark 0       1     0 

For  making  a  search  amongst  the  classified  representa- 
tions of  trade  marks,  for  every  quarter  of  an  hour .  .   0       10 
For  office  copy  of  documents  for  every  72  words  (but 

never  less  than  Is.) 0       0     3 

In  cases  where  the  wood  block  or  electrotype  of  the 
trade  mark  exceeds  2  inches  in  breadth  or  depth,  or 
in  breadth  and  depth — 

For  every  inch  or  part  of  an  inch  over  2  inches 

in  breadth   0       2     0 

For  every  inch  or  part  of  an  inch  over  2  inches  in 

depth 0   2  0 

On  application  for  extension  of  time,  for  each  month 

or  part  thereof 0       5     0 

On  an  application  to  the  Registrar  for  leave  to  add  to 

or  alter  a  single  mark 1       0     0 


368  NEW  ZEALAND 

Classification  of  Goods. 

If  any  doubt  arises  as  to  what  class  any  particular  description 
of  goods  belongs  to,  the  doubt  shall  be  determined  by  the  Reg- 
istrar. 

Classes  of  Goods. 

1.  Chemical  substances  used  in  manufactures,  photography, 
or  philosophical  research  and  anticorrosives. 

2.  Chemical   substances   used   for   agricultural,  horticultural, 
veterinary  and  sanitary  purposes. 

3.  Chemical    substances   prepared    for   use   in   medicine   and 
pharmacy. 

4.  Raw,  or  partly  prepared,  vegetable,  animal  and   mineral 
.substances  used  in  manufactures,  not  included  in  other  Classes. 

5.  Un-wrought    and   partly-wrought    metals   used    in   manu- 
facture. 

6.  Machinery  of  all  kinds   and  parts  of  machinery,   except 
agricultural  and  horticultural  machines  included  in  Class  7. 

7.  Agricultural   and   horticultural   machinery,    and    parts    of 
such  machinery. 

8.  Philosophical  instruments,  scientific  instruments,  and  ap- 
paratus   for   useful    purposes.     Instruments   and   apparatus    for 
teaching. 

9.     Musical  instruments. 

10.  Horological  instruments. 

11.  Instruments,  apparatus  and  contrivances  not  medicated, 
for  surgical  or  curative  purposes,  or  in  relation  to  the  health 
of  men  or  animals. 

12.  Cutlery  and  edge  tools. 

13.  Metal  goods,  not  included  in  other  Classes. 

14.  Goods  of  precious  metals    (including  aluminium,  nickel, 
Britannia  metal,  etc.)  and  jewelry  and  imitations  of  such  goods 
and  jewelry. 

15.  Glass. 

16.  Porcelain  and  earthenware. 

17.  Manufactures    from    mineral    and    other   substances    for 
building  or  decoration. 

18.  Engineering,  architectural,  and  building  contrivances. 

19.  Arms,  ammunition,  and  stores,  not  included  in  Class  20. 

20.  Explosive  substances. 

21.  Naval    architectural   contrivances   and   naval   equipments 
not  included  in  Classes  19  and  20. 

22.  Carriages. 

23.  (a)   Cotton   yarn,   and   sewing  cotton   not  on   spools  or 
reels,     (b)   Sewing  cotton  on  spools  or  reels. 

24.  Cotton  piece  goods  of  all  kinds. 

25.  Cotton  goods  not  included  in  Classes  23,  24  or  38. 

26.  Linen  and  hemp  yarn  and  thread. 


NEW  ZEALAND  369 

27.  Linen  and  hemp  piece  goods. 

28.  Linen  and  hemp  goods  not  included  in  Classes  26,  27 
or  50. 

29.  Jute  yarns  and  tissues,  and  other  articles  made  of  jute, 
not  included  in  Class  50. 

30.  Silk,  spun,  thrown,  or  sewing. 

31.  Silk  piece  goods. 

32.  Silk  goods  not  included  in  Classes  30  and  31. 

33.  Yarns  of  wool,  worsted,  or  hair. 

34.  Cloths  and  stuffs  of  wool,  worsted,  or  hair. 

35.  Woolen,  worsted  and  hair  goods  not  included  in  Classes 
33  and  34. 

36.  Carpets,  floorcloth  and  oilcloth. 

37.  Leather,  skins  unwrought  and  wrought,  and  articles  made 
of  leather  not  included  in  other  classes. 

38.  Articles  of  clothing. 

39.  Paper    (except    paper-hangings),    stationery    and   book- 
binding. 

40.  Goods  manufactured  from  india-rubber  and  gutta-percha, 
not  included  in  other  classes. 

41.  Furniture  and  upholstery. 

42.  Substances  used  as  food  or  as  ingredients  in  food. 

43.  Fermented  liquors  and  spirits. 

44.  Mineral  and  aerated  waters,  natural  and  artificial,  includ- 
ing ginger-beer. 

45.  Tobacco,  whether  manufactured  or  unmanufactured. 

46.  Seeds  for  agricultural  and  horticultural  purposes. 

47.  Candles,  common  soap,  detergents ;  illuminating,  heating 
or  lubricating  oils ;  matches ;  and  starch,  blue,  and  other  prepara- 
tions for  laundry  purposes. 

48.  Perfumery  (including  toilet  articles,  preparations  for  the 
teeth  and  hair,  and  perfumed  soap). 

49.  Games  of  all  kinds  and  sporting  articles  not  included  in 
other  classes. 

50.  (1)   Goods  manufactured  from  ivory,  bone,  or  wood,  not 
included  in  other  classes.      (2)   Goods  manufactured  from  straw 
or  grass,  not  included  in  other  classes.     (3)   Goods  manufactured 
from    animal   and   vegetable   substances,   not   included    in   other 
classes.     (4)   Tobacco  pipes.        (5)   Umbrellas,  walking  sticks, 
brushes  and  combs.      (6)   Furniture  cream,  plate  powder.     (7) 
Tarpaulins,   tents,    rick-cloth,   rope,   twine.     (8)   Buttons   of   all 
kinds  other  than  of  precious  metal  or  imitations  thereof.     (9) 
Packing  and  hose  of  all  kinds.     (10)   Goods  not  included  in  the 
foregoing  classes. 

.Documents  Required. 

All  documents  to  be  left  with  or  sent  to  the  Registrar  shall  be 
upon  foolscap  paper  of  a  size  of  approximately  13  inches  by  8 

24 


37°  NEW  ZEALAND 

inches,  and  shall  have  on  the  left  hand  part  thereof  a  margin  of 
not  less  than  \l/2  inches. 

Application  for  registration  accompanied  by  four  copies  of  the 
mark ;  an  electrotype  or  wood  cut  representing  the  mark  exactly 
as  it  is  required  to  be  registered. 

Authorization :  In  urgent  cases  the  Registrar  has  allowed 
the  attorney  to  sign  all  the  documents  in  connection  with  an 
application  for  registration  of  a  trade  mark  without  producing 
his  authority. 

(Forms  for  application  may  be  obtained  from  B.  Singer's 
Offices.) 

Marking  Goods :     "Trade  Mark  Registered." 

DECISIONS. 
Trade  Mark  Applications  in  New  Zealand. 

The  Court  of  Appeal  of  New  Zealand  in  June,  1907,  handed 
down  a  decision  of  considerable  interest,  in  a  case  of  an  appli- 
cation for  the  registration  of  a  trade  mark  opposed  by  a  prior 
registrant  of  similar  marks.  The  question  at  issue  was  whether 
or  not  the  mark  sought  to  be  registered  was  sufficiently  like 
certain  marks  registered  as  to  be  calculated  to  deceive,  and  the 
importance  of  the  decision  lies  in  the  position  taken  by  the 
court  as  to  the  party  upon  whom,  in  such  case,  rested  the  burden 
of  proof. 

It  was  held  that  the  applicant,  in  such  a  case,  must  prove 
affirmatively  that  there  was  no  danger  of  confusion  between  the 
mark  which  he  sought  to  have  registered  and  the  mark  already 
upon  the  record,  and  in  case  of  any  doubt,  the  application  must 
be  rejected. 

The  applicant  sought  to  register  the  trade  mark  "Rising  Sun" 
for  soap,  and  was  met  by  prior  registrations  of  the  words  "Sun- 
light," 'Sunbeam"  and  "Sunshine"  in  the  name  of  another  party, 
upon  the  ground  of  which  his  application  was  rejected  by  the 
Court  of  Appeal,  reversing  the  decision  of  the  lower  court. 

In  denying  to  the  applicant  the  registration  sought,  Justice 
Williams  said: 

"I  do  not  think  the  judgment  in  the  court  below  suffi- 
ciently recognizes  the  distinction  between  an  applicant  for 
the  registration  of  a  trade  mark,  and  the  defendant  in  an 
action  for  the  infringement  of  a  trade  mark.  It  seems  to 
assume  that  to  justify  the  refusal  of  registration,  the  evi- 
dence must  be  such  that  the  court  would,  at  the  instance  of 
the  owner  of  the  existing  trade  mark,  grant  an  injunction 
to  restrain  the  use  of  the  trade  mark  proposed  to  be  regis- 
tered. *  *  *  The  true  principle  is  that  the  applicant 
must  justify  the  registration  of  his  trade  mark  by  showing 


NEW  ZEALAND  371 

affirmatively  that  it  is  not  calculated  to  deceive,  and  that,  if 
there  is  any  doubt  whether  it  is  so  calculated,  or  not,  his 
application  ought  to  be  disallowed.  *  *  *  It  does  not 
follow,  and  is  by  no  means  to  be  inferred,  that  an  injunc- 
tion would  be  granted  at  the  suit  of  the  appellants,  to  re- 
strain the  use  by  the  respondents  of  the  words  'Rising 
Sun.'  " 

Taking  up  the  question  of  the  similarity  of  the  marks  re- 
ferred to,  the  learned  justice  said,  that  while  the  wrappers  and 
general  appearance  of  the  packages  were  entirely  different,  nev- 
ertheless, this  was  no  test,  for  the  trade  mark  could  be  fairly 
used  in  a  different  way,  and  that  the  court  must  consider  the 
consequences  which  might  result  from  any  unfair  use  of  it,  and 
added  that  he  could  not  say  that  the  applicant  had  affirmatively 
proven  the  unlikelihood  of  confusion  by  concurrent  use  of  the 
two  marks. 

Justice  Denniston,  concurring,  said: 

"I  do  not  think  the  attention  of  the  chief  justice  in  the 
court  below  was  sufficiently  directed  to  the  difference  in 
procedure  and  consequences  and  in  the  onus  of  proof  in 
cases  for  an  injunction  for  an  infringement  and  those  for 
registration,  which  is  clearly  pointed  out  by  Lord  Watson 
in  Eno  vs.  Dunn.  The  respondents  have  not,  in  my  opinion, 
discharged  the  onus  upon  them  to  satisfy  the  court  that  there 
would  be  no  reasonable  danger  of  the  public  being  deceived. 
*  *  *  The  decision  on  the  question  of  registration  does 
not  determine  whether  the  successful  party  could,  and  if 
so,  in  what  cases,  restrain  the  use  of  the  words  refused  reg- 
istration." 

Justice  Cooper,  concurring,  said : 

"The  burden  of  showing  that  the  trade  mark  which  the  re- 
spondents have  applied  to  register  is  not  calculated  to  deceive 
the  public,  rests  upon  the  respondents.  They  must  .show 
this  affirmatively,  and  it  is  a  necessary  consequence  that  in 
dubio  the  application  to  register  the  trade  mark  ought  to 
be  disallowed."  (Lever  vs.  Newton,  P.  &  T.  M.  Rev., 
1907,  p.  2174.) 

The  authority  relied  upon  by  the  learned  justice  above  quoted, 
was  a  decision  of  the  House  of  Lords  of  Great  Britain  in  the 
case  of  Eno  vs.  Dunn,  decided  by  that  body  in  the  year  1890. 
In  this  case,  Dunn  had  applied  to  register  a  trade  mark,  consist- 
ing among  other  things,  of  the  words  "Fruit  Salt"  for  baking 
powder.  The  application  was  opposed  by  Eno,  who  had  pre- 
viously registered  the  words  "Fruit  Salt"  for  a  proprietary  med- 
icine, and  for  a  powder  to  be  used  in  making  a  non-intoxicating 


372  NEW  ZEALAND 

beverage.     Before  the  House  of  Lords,  his  position  was  sus- 
tained and  the  application  of  Dunn  was  refused. 

The  British  trade  mark  law  provided  that  no  mark  should  be 
registered,  which,  by  reason  of  its  being  calculated  to  deceive 
should  be  deemed  disentitled  to  protection  in  a  Court  of  Justice. 
Lord  Watson,  in  his  opinion  construing  this  provision  of  the 
statute,  said: 

"These  prohibitory  clauses  cast  upon  the  applicant  the 
duty  of  satisfying  the  comptroller  or  the  court  that  the 
trade  mark  which  he  proposes  to  register  does  not  come 
within  their  scope.  In  an  inquiry  like  the  present,  he  does 
not  hold  the  same  position  that  he  would  have  occupied 
if  he  had  been  defending  himself  against  an  action  for  in- 
fringement. There,  the  onus  of  snowing  that  his  trade 
mark  was  calculated  to  mislead,  rests  not  on  him,  but  upon 
the  party  alleging  infringement.  Here,  he  is  in  petitorio, 
and  must  justify  the  registration  of  his  trade  mark  by  show- 
ing affirmatively  that  it  is  not  calculated  to  deceive.  It 
appears  to  me  to  be  a  necessary  consequence  that  in  dubio 
his  application  ought  to  be  disallowed." 

And  Lord  Herschell,  concurring,  said : 

"It  was  not  contended  at  the  bar  that  the  respondent's 
application  to  have  the  mark  registered  shoud  be  rejected 
on  the  ground  that  it  was  an  infringement  of  the  appellant's 
trade  mark.  The  only  point  insisted  on  was  that  it  ought 
not  to  be  registered,  because  it  was  calculated  to  deceive. 
*  *  *  I  think  it  is  enough  to  say  that  I  am  not  satisfied 
that  there  would  be  no  reasonable  danger  of  the  public  being 
so  deceived.  *  *  * 

To  prevent  misapprehension,  I  desire  to  add  that  your 
lordships  have  not  now  to  determine  whether  the  appellant 
could  in  any,  and  if  so,  in  what  cases,  restrain  the  use  of 
the  words  'Fruit  Salt.'  I  have  already  indicated  my  onin- 
ion  that  the  appellant  has  no  private  property  in  that.  The 
sole  point  for  decision  is  whether  the  comptroller  ought  to 
be  directed  to  proceed  with  the  registration  of  a  particular 
trade  mark  of  which  they  form  an  element.  For  the  reasons 
I  have  given,  I  think  he  ought  not."  (Eno  vs.  Dunn,  1800 
Law  Reports,  Ap.  Cas.  252.) 

To  the  same  effect  is  a  decision  of  the  British  Court  of  Appeal 
rendered  in  the  year  1894,  cancelling  the  registration  of  a  trade 
mark,  consisting  of  the  words  "Red  Star  Brand,"  by  reason  of  a 
prior  registration,  consisting  of  the  representation  of  a  star,  with 
which  it  was  held  that  the  mark  last  registered  might  be  con- 
fused. 


NICARAGUA  373 

.   Lord  Justice  Lindley  said,  in  decreeing  the  cancellation  of  the 
second  mark : 

"It  does  not  at  all  follow  from  this,  nor  is  it  to  be  inferred 
from  this,  that  Brooks  &  Co.  could  get  an  injunction  to  re- 
strain the  Belgian  Company  from  using  this  brand.  I  say 
nothing  about  that,  but  I  think  Brooks  &  Co.  are  entitled  to 
have  the  trade  mark  'Red  Star  Brand'  expunged."  (Re 
Trade  Mark  of  La  Societe  Anonyme,  11  Rep.  of  Pat.,  etc., 
Cases  142.) 


NICARAGUA 

The  territorial  extent  of  this  Republic  is  about  50,000  English 
square  miles.  The  population  in  1911  was  estimated  at  650,000, 
including  Indians. 

The  Republic  is  so  well  situated  between  the  two  oceans  that 
it  has  two  lines  of  coasts ;  that  on  the  Atlantic  extends  from  Rio 
Segovia  to  the  embouchure  of  the  Rio  San  Juan,  with  a  length  of 
180  to  200  leagues.  It  receives  three  great  rivers — the  Rio 
Segovia  or  Gracias,  the  Rio  Grande  or  Bluefield,  and  the  San 
Juan. 

The  coast  of  the  Pacific  extends  from  the  Bay  of  Fonseca  to 
Salinas.  The  Bay  of  Fonseca,  the  port  of  Corinto,  of  San  Juan 
del  Sur  and  the  Bay  of  Salinas  offer  spacious  and  well  protected 
shelters  to  shipping. 

The  seat  of  the  government  is  at  Managua,  situated  on  the 
south  of  Lake  Managua. 

The  principal  imports  are  manufactured  cotton  goods  of  all 
kinds,  woolen  goods,  provisions,  wines  and  spirits,  flour,  barbed 
wire  fencing,  drugs,  cement,  matches,  hardware,  beer,  candles, 
soap,  sewing  machines  and  machinery,  sewing  thread,  coffee  bags 
and  galvanized  iron  roofing. 

MONEY — The  silver  dollar  (100  centavos)=ls.  8d.^40  cents 
U.  S.  The  peso  ( paper)  =8^d.  (about)  =17  cents  U.  S. 

WEIGHTS  AND  MEASURES — The  metric  system. 

Laws. 
November  21,  1907. 

Duration. 

Ten  years.  The  duration  of  the  property  in  a  trade  mark  is 
indefinite,  but  it  shall  be  considered  abandoned  by  reason  of  the 
closing  or  lack  of  production  for  more  than  one  year,  of  the 
establishment,  factory  or  business  in  which  it  was  used. 


374  NICARAGUA 

Renewal. 

The  registration  of  each  mark  entails  a  charge  of  twenty-five 
pesos  and  should  be  renewed  every  ten  years.  Delay  in  the  re- 
newal does  not  cause  the  loss  of  the  right  to  the  exclusive  use 
of  the  mark,  but  until  it  has  been  accomplished,  the  interested 
party  shall  not  bring  action  to  prosecute  infringers  of  the  mark 
and  of  the  article  which  it  protects. 

What  Is  a  Trade  Mark. 

A  trade  mark  or  commercial  mark  is  the  special  sign  applied 
to  an  agricultural  or  industrial  product,  or  to  a  commercial 
.article,  to  advise  the  public  of  its  origin  and  to  distinguish  it 
from  other  products  of  the  same  kind. 

The  choice  of  the  sign  which  is  to  constitute  a  mark  belongs 
to  the  producer  of  the  article  for  which  it  is  designed. 

Not  Rcgistrable. 

1.  Generic  terms,  names  merely  geographical  and  those  of 
individuals  and  associations,  unless  the  mark  contains  in  addi- 
tion distinctive  features  which  serve  to  distinguish  the  object  for 
which  it  is  designed. 

2.  Any   sign   that   is   contrary  to  morals,   or   that   tends   to 
ridicule  ideas,  persons,  objects  or  institutions  which  in  the  judg- 
ment of  the  Ministry  of  the  Interior  are  worthy  of  general  con- 
sideration. 

3.  The  National  arms,  escutcheons  and  emblems. 

4.  The   arms,   escutcheons,   or  emblems   of   foreign  nations, 
states  or  political  corporations,  without  their  respective  consent. 

5.  The   names,   signatures,  and  portraits   of  living  persons, 
without  their  consent. 

6.  Marks  identical  with  or  substantially  similar  to  those  that 
have  been  already  registered  when  it  is  sought  to  protect  with 
the  former,  products  of  the  same  class  as  those  protected  by  the 
latter. 

There  shall  not  be  considered  as  marks,  form,  color,  phrases 
or  designations  that  do  not  constitute  by  themselves  the  dis- 
tinctive sign  of  the  specialty,  in  a  commercial  sense,  of  an  indus- 
trial product. 

Requirements. 

Application  for  the  registration  of  a  trade  mark  must  be  ac- 
companied by  power  of  attorney  duly  legalized  and  authenticated 
by  a  Nicaraguan  Consul ;  electrotype  and  six  reproductions  of 
the  same  on  thin  paper.  Simple  or  plain  names  like  "Oliver," 
"Domestic,"  or  even  compounds  like  "Bromo-quinine,"  without 
a  distinguishing  character,  are  not  registrable  in  Nicaragua,  un- 


NICARAGUA  375 

less  they  have  been  registered  in  the  home  country,  in  which 
case  a  certificate  of  registration  of  the  home  country  must  accom- 
pany other  documents.  (Forms  for  application  can  be  obtained 
from  B.  Singer's  Offices.) 


Mode  of  Application. 

Application  for  registrations  ought  to  be  presented  to  the  Min- 
istry of  the  Interior  on  stamped  paper  of  the  sixth  class,  signed 
by  the  interested  party  or  his  representative,  the  latter  to  be  pro- 
vided, however,  with  an  authentic  power  of  attorney,  and  shall 
contain  the  following: 

(o)  The  name  of  the  owner  of  the  mark,  his  domicile  and 
nationality. 

(&)  The  name  and  location  of  the  factory  or  establishment 
where  the  article  is  produced  for  which  the  mark  is  designed. 

(c)  The    enumeration    and    description    of    the    objects    or 
products  which  it  is  intended  to  distinguish  by  means  of  the 
mark. 

(d)  A  description  of  the  mark,  illustrated  by  a  facsimile  of 
the  same,  reproduced  in  triplicate. 

(e~)  In  case  the  mark  is  arranged  in  concave  or  in  relief  or 
presents  any  other  peculiarity  that  cannot  be  shown  graphically, 
there  shall  be  presented  two  copies  with  an  indication  of  the  par- 
ticulars and  details.  (Art.  5.) 

An  application  in  regard  to  the  registration  of  a  mark  having 
been  presented  the  Minister  of  the  Interior  shall  ask  information 
of  the  Chief  of  the  Registration  Office.  This  official  shall  make 
an  examination  of  the  documents  presented  in  order  to  ascertain 
if  they  satisfy  the  requirements  of  the  law,  and  shall  complete  the 
resulting  information  within  the  third  day.  If  it  is  favorable 
the  Minister  of  Fomento  shall  give  an  order  to  register  it,  pay- 
ment having  been  made  of  the  respective  fees. 

The  registration  of  a  mark  shall  always  be  made  without  preju- 
dice to  third  parties,  and  upon  the  exclusive  responsibility  of  the 
applicant. 

The  registration  having  been  effected,  the  Chief  of  the  office 
shall  send  to  the  party  interested  the  certification  of  the  matter, 
on  stamped  paper  of  the  first  class,  the  document  which  consti- 
tutes the  title  to  the  exclusive  use  of  the  mark. 

Questions  which  may  arise  in  regard  to  the  right  to  the  exclu- 
sive use  of  a  mark,  in  regard  to  the  priority  of  its  registration 
and  in  regard  to  its  identity  with  others  already  registered,  shall 
be  decided  by  the  ordinary  Tribunals. 

When  there  has  been  litigation  the  sentence  of  execution  shall 
be  registered  and  inserted  in  the  certificate  of  registration. 


376  NICARAGUA 

Opposition. 

Whenever  there  is  presented  an  application  for  registration 
of  a  mark  of  which  Article  5  treats,  the  Ministry  shall  cause  it 
.to  be  published  in  the  Official  Journal  for  three  consecutive 
months. 

The  ninety  days  having  elapsed,  if  no  opposition  has  been 
presented,  the  Ministry  shall  resolve  to  grant  to  the  applicant 
the  title  of  property  in  the  mark  which  shall  be  issued  on  a  sheet 
of  stamped  paper  of  the  first  class. 

If  there  has  been  opposition,  the  Ministry  shall  order  the  par- 
ties to  argue  their  rights  before  the  competent  lower  judge,  and 
in  such  case  shall  only  issue  the  title  to  him  to  whom  the  greater 
right  has  been  declared  by  sentence  of  execution. 

Assignment. 

Trade  marks  are  only  transferred  with  the  establishment  pro- 
ducing the  objects  which  they  serve  to  distinguish.  Conse- 
quenty  the  transfer  of  a  mark  carries  with  it  the  right  of  indus- 
trial or  commercial  exploitation  of  the  products  protected  by  it. 
The  transfer  is  not  subject  to  any  special  formality  and  shall  be 
proved  according  to  common  law,  but  it  should  be  registered  in 
the  trade  mark  office,  without  which  requisite  it  shall  be  without 
effect  against  third  parties. 

Annulment. 

The  registration  of  a  mark  shall  be  null  when  it  has  been 
effected  in  contravention  of  the  provisions  of  this  law,  as  also 
when  the  mark  has  been  previously  registered  by  another,  in 
which  case  the  nullity  shall  be  judicially  declared  upon  petition 
of  the  interested  party. 

Advice  of  the  sentence  of  nullity  shall  be  given  to  the  Ministry 
of  Fomento  by  the  judge  or  Tribunal  who  has  taken  cognizance 
of  it  in  the  last  instance. 

The  action  demanding  the  nullity  of  the  registration  of  a  mark 
is  open  to  anyone  who  believes  himself  to  be  prejudiced  thereby ; 
the  Public  Ministry  may  also  bring  it  in  those  cases  in  which 
there  is  any  public  interest. 

The  questions  regarding  the  nullity  of  which  the  last  article 
treats  shall  be  decided  by  the  ordinary  Tribunals  and  the  sentence 
of  execution  that  contain  such  decisions  shall  be  registered  in  the 
respective  office. 

Offenses. 

The  following  shall  be  considered  guilty  of  the  offense  included 
in  Article  '319  of  the  Penal  Code  and  shall  be  punished  by  the 
penalties  therein  established: 


NICARAGUA  377 

•(a)  Those  who  place  on  articles  or  products  that  they  sell 
or  manufacture  a  mark  at  that  time  legally  registered  in  favor 
of  another  person. 

(6)  Those  who  place  on  articles  or  products  that  they  sell  or 
produce,  a  mark  that  is  so  close  an  imitation  of  one  legally  reg- 
istered as  to  be  confounded  with  the  lawful  mark  at  first  sight. 

(c)  Those  who  place  on  the  articles  mentioned  a  mark  which, 
although  legally  registered,  is  made  to  appear  by  any  addition, 
subtraction  or  alteration  as  if  it  were  another  mark. 

(d)  Those  who  place  on  sale  or  put  into  circulation  goods 
marked  under  the  circumstances  which  the  preceding  sections 
enumerate. 

Articles  or  products,  if  objects,  of  the  offenses  named  in  the 
preceding  article,  shall  be  confiscated;  but  when  the  owner  of  a 
mark,  legally  registered,  has  been  constituted  plaintiff,  he  shall 
be  entitled  to  have  appropriated  to  him  all  the  products  which  are 
found  bearing  the  illegal  mark,  whether  then  in  the  possession 
of  the  guilty  party  or  in  the  possession  of  an  agent  or  consignee. 

The  present  statute  (Law  of  November  21,  1907)  contains 
many  provisions  which  in  character  and  terms  are  very  sugges- 
tive of  the  trade  mark  law  of  the  United  States,  after  which  it 
is  apparently  modeled  in  many  respects. 

The  benefit  of  the  law  appears  to  be  extended  both  to  native 
citizens  and  to  foreigners,  without  distinction.  The  right  to  the 
exclusive  use  of.  the  mark  depends  upon  registration,  although 
there  is  a  provision  permitting  an  action  for  the  annulment  of 
the  registration  "by  whomsoever  shall  consider  himself  preju- 
diced by  it."  Whether  this  is  intended  to  confer  upon  the  prior 
user  who  has  failed  to  register,  the  right  to  cancel  a  registration 
made  by  another,  is  not  clear  from  the  law. 

The  duration  of  the  registration  is  ten  years.  The  provision 
for  the  renewal  of  the  mark  at  the  expiration  of  this  time,  shows 
very  unusual  regard  for  the  rights  of  the  owner  of  the  mark. 
The  failure  to  make  the  renewal  at  the  proper  time  will  work  no 
forfeiture  of  the  right  to  the  exclusive  use  of  the  mark,  but,  until 
the  tax  shall  have  been  paid  and  the  mark  renewed,  the  owner 
can  maintain  no  action  for  counterfeiting  of  the  mark,  or  for  its 
protection  against  infringement.  In  this  respect,  the  statute  is 
far  in  advance  of  the  trade  mark  laws  of  other  Spanish-American 
countries,  where  it  often  happens  that  a  mark  inadvertently  al- 
lowed to  expire,  is  immediately  seized  upon  and  registered  by 
someone  who  had  no  right  to  do  so,  but  who  finds  therein  a 
source  of  profit. 

Fine  and  imprisonment  under  the  provisions  of  the  Penal  Code 
are  imposed  upon  those  who  wrongfully  make  use  of  another's 
registered  trade  mark,  or  of  any  imitation  thereof,  calculated  to 
deceive.  Articles  bearing  infringing  marks  are  subject  to  con- 
fiscation and  in  a  proceeding  instituted  by  the  owner  of  a  reg- 


378  NICARAGUA 

istered  trade  mark,  the  ownership  of  the  goods  thus  wrongfully 
marked  may  be  awarded  to  him. 

Property  in  a  trade  mark  is  of  perpetual  duration,  but  a  trade 
mark  will  be  deemed  abandoned  by  entire  disuse  for  more  than 
one  year. 

Pure  Food  and  .Drugs  Law. 

Under  date  of  April  6,  1908,  an  important  decree  regulating 
the  importation  and  sale  of  food  products  and  patent  medicines 
was  issued  by  the  President  of  this  Republic. 

By  its  terms,  the  importation  from  abroad,  or  the  manufacture 
within  the  Republic,  of  adulterated  or  misbranded  drugs  or  food 
products  is  prohibited.  Patent  medicines  are  required  to  bear  a 
label  displaying  the  exact  formula  of  their  composition.  Those 
not  so  branded  on  the  date  mentioned  must  be  analyzed  at  the 
official  laboratories  and  bear  upon  the  label  the  analysis  of  the 
official  chemist.  From  July  6th  importations  through  the  Cus- 
toms House  of  patent  medicines  not  properly  branded  in  ac- 
cordance with  the  law  is  strictly  prohibited.  Violation  of  this 
law  by  the  importation  or  sale  of  offending  goods  is  punishable 
by  a  fine  of  two  hundred  to  one  thousand  pesos  or  imprisonment 
for  from  three  months  to  one  year  "besides  such  criminal  re- 
sponsibility as  may  be  incurred  in  accordance  with  the  penal 
law."  (Bulletin  of  the  Bureau  of  American  Republics,  1908, 
p.  1287.) 

Protection  of  Trade  Names. 

The  law  of  Nicaragua  forbids  registration  of  a  pr6per  name, 
name  of  a  company  or  corporation,  except  when  it  forms  part  of 
a  distinguishing  mark  (Law  of  1907,  Art.  3,  1).  As  to  this 
country,  therefore,  the  only  apparent  protection  to  be  obtained 
for  trade  names  is  to  register  them  in  connection  with  trade 
marks  and  as  part  thereof,  trusting  that  the  use  of  a  name  so 
registered  will  be  regarded  as  an  infringement  upon  the  mark. 
There  is  no  other  reference  in  the  law  applicable  to  trade  names. 

The  Renter  Soap  Trade  Mark. 

A  decision  was  rendered  in  the  criminal  court  at  Grenada, 
Nicaragua,  in  a  case  of  falsification  of  the  well  known  "Reuter" 
soap  label.  The  prosecution  was  instituted  by  a  representative 
of  Barclay  &  Barclay  of  New  York  against  a  certain  merchant 
of  Nicaragua,  who  was  shown  to  have  offered  as  a  substitute  for 
their  Reuter  soap,  one  bearing  the  trade  mark  "Rotier."  Three 
witnesses  testified  that  they  had  asked  at  defendant's  store  for 
the  "Reuter"  soap  and  had  received  instead  the  imitation  article. 
The  wrappers  of  the  "Rotier"  soap  were  of  black  paper  with 
lettering  and  designs  in  yellow  similar  in  this  respect  to  the 
wrappers  used  on  the  "Reuter"  soap. 


NORTHERN  NIGERIA  379 

In  deciding  the  case  for  the  complainant,  the  court  cited  the 
decree  of  1907,  for  the  protection  of  trade  marks,  which  pro- 
vides that  they  shall  be  held  guilty  under  the  Penal  Code,  who 
either  apply  to  goods  which  they  produce  or  sell,  a  mark  in  imi- 
tation of  one  legally  registered,  in  such  a  way  that  at  first  sight 
it  may  be  mistaken  for  the  legal  one,  or  they  who  place  on  sale 
goods  marked  in  the  manner  stated.  It  was  shown  that  the 
"Reuter"  soap  label  had  been  registered  in  Nicaragua  and  there- 
fore was  entitled  to  protection  under  the  law.  The  contention  by 
the  defendant  that  the  "Reuter"  soap  label  could  not  be  legally 
registered  in  Nicaragua,  because  the  form,  colors,  phrases  or 
designations  contained  thereon  did  not  constitute  of  themselves 
a  distinguishing  mark,  was  held  to  be  groundless.  It  was  fur- 
ther held  that  citizens  of  foreign  countries  enjoyed  the  same 
privileges  in  Nicaragua  as  natives  in  respect  to  marks  of  manu- 
facture or  trade.  Upon  these  considerations,  the  court  held  that 
the  defendant  was  guilty  of  the  offense  charged,  and  decreed  that 
his  property  be  seized  in  sufficient  amount  to  reimburse  the  com- 
plainant firm  for  the  damages  suffered.  (El  Commercio,  Mana- 
gua, Nov.  6,  1911.) 

Marking  Goods:     "Marca  Registrada,  or  M.  R." 


NORTHERN  NIGERIA 

This  territory  is  bounded  on  the  north  by  the  French  Soudan ; 
on  the  west  by  French  Dahomey ;  on  the  southwest  by  Lagos ; 
on  the  east  and  southeast  by  the  German  Cameroons,  and  on  the 
south  by  Southern  Nigeria.  The  River  Niger  runs  through  the 
western  portion  of  the  territory  and  the  River  Benue  through  the 
southern  portion.  The  principal  towns  are  Bauchi,  Bida,  De- 
kina,  Gassol,  Gujba,  Ilorin,  Karoina,  Kano,  Katagum,  Keffi,  Kon- 
tagora,  Lokoja,  Maiugari,  Sokoto,  Yola,  Zaria.  The  area  is 
about  281,000  square  miles.  The  native  population  in  1911  was 
estimated  to  be  7,165,800. 

MONEY,  WEIGHTS  AND  MEASURES — Same  as  Great  Britain. 

Laws. 

Trade  Marks  Proclamation  No.  25,  Sec.  39  of  1900.  Amend- 
ing the  above,  1901. 

Duration. 

Fourteen  years;  renewable. 

What  May  Be  Registered. 

(a)  A  name  of  an  individual,  or  firm,  printed  or  impressed, 
or  woven  in  some  particular  or  distinctive  manner;  or 

(&)     A  written  signature  or  copy  of  a  written  signature  of 


380  NORWAY 

the  individual  or   firm   applying   for   registration   thereof  as  a 
trade  mark;  or 

(c)  A   distinctive    device,    mark,   brand,   heading,    label,    or 
ticket. 

(d)  An  invented  word  or  invented  words;  or 

(e)  A  word  or  words  having  no  reference  to  the  character 
or  quality  of  the  goods,  and  not  being  a  geographical  name. 

There  may  be  added  to  any  one  or  more  of  the  essential  partic- 
ulars mentioned  in  this  section  any  letter,  words,  or  figures,  or 
combination  of  letters,  words,  or  figures,  or  any  of  them,  but 
the  applicant  for  registration  of  any  such  additional  matter  must 
state  in  his  application  the  essential  particulars  of  the  trade  mark, 
and  must  disclaim  in  his  application  any  right  to  the  exclusive 
use  of  added  matter,  and  a  copy  of  the  statement  and  disclaimer 
shall  be  entered  on  the  register. 

Requirements. 

Power  of  attorney,  six  copies  of  the  mark,  electrotype  or 
wood  cut. 

Government  Fees. 

On  application,  10s. ;  on  completion,  £  1 ;  renewal  fee,  £1. 

Assignment. 

Assignments  must  be  recorded.  Trade  marks  are  assignable 
with  the  good  will  of  the  business.  Assignment  fee,  £1. 

Classification. 
Same  as  British. 


NORWAY 

Norway,  a  kingdom  of  Northern  Europe,  comprises  the  west- 
ern and  northerly  portions  of  the  Scandinavian  peninsula  contain- 
ing an  area  of  124,100  square  miles.  It  is  about  1,100  miles  in 
length  and  250  at  its  greatest  breadth.  The  coast  line  is  enor- 
mous owing  to  the  numerous  fjords  which  penetrates  the  land 
in  all  directions.  The  country  is  divided  into  twenty  provinces 
or  amts. 

The  population  in  1911  was  estimated  to  be  2,392,900,  two- 
thirds  of  whom  are  employed  in  agriculture,  the  timber  trade  and 
fisheries. 

The  wealth  of  the  country  consists  of  its  timber,  fisheries,  ice 
and  mineral  resources ;  of  these  the  ice,  paper,  wood-pulp,  canned 
goods,  granite,  portable  houses  and  joinery,  fish  oils,  machinery 
and  ship-building  trades,  and  its  mines,  are  being  rapidly  de- 
veloped. 


NORWAY  381 

The  imports  are  as  follows :  Colonial  wares,  cotton  goods, 
iron,  grain  of  all  kinds,  coal  and  coke,  salt,  woolen  goods,  ma- 
chinery, chemicals  for  the  wood-pulp  and  paper  trades,  coopers' 
supplies,  raw  wool  and  cotton,  etc. 

The  area  covered  by  forests  in  Norway  is  about  87,000  square 
kiloms.  and  73%  of  the  timber  is  pine  wood  (red  and  white)  and 
about  27%  umbrageous  trees,  among  which  the  birch  predom- 
inates. 

MONEY— The  krone  of  100  6re=ls.  l>^d.=27  cents  U.  S. 

WEIGHTS  AND  MEASURES — The  metric  system. 

Laws. 

May  26,  1884,  and  January,  1911.  Decree  of  December  29, 
1884. 

Duration. 

Ten  years,  which  may  be  extended  for  like  period. 

Renewal. 

A  registered  mark  may  be  renewed  during  a  time  not  exceed- 
ing three  months  after  expiration  of  the  term  for  which  the 
registration  is  granted  on  payment  of  an  additional  fee  of  kr.  5. 
Notice  as  to  renewal  will  be  given  to  the  proprietor  by  the  Ad- 
ministration. (Art.  12.) 

If  a  registered  trade  mark  is  not  renewed,  the  trade  mark 
cannot  be  registered  by  any  other  person  until  two  years  after 
the  cancellation.  (Art.  3.) 

Who  May  Register. 

Any  person  who  carries  on  within  the  kingdom  manufacturing, 
agriculture,  metallurgy,  commerce  or  industry  may,  by  registra- 
tion in  accordance  with  the  law,  acquire  the  right  to  use  special 
marks  to  distinguish  his  products  from  those  of  others.  Any 
person  engaged  in  any  such  industry  in  another  country,  pro- 
vided the  country  in  which  he  is  located  accords  reciprocal  rights 
to  Norwegian  subjects,  may  register  his  mark  previously  regis- 
tered in  his  own  country. 

What  May  Not  Be  Registered. 

(1)  Marks  consisting  exclusively  of  numerals,  letters  or  words 
not  distinctive  in  form;  (2)  which  contain  unlawfully  the  per- 
sonal or  commercial  name  of  another  or  of  property  belonging  to 
another;  (3)  which  contain  public  arms  or  insignia;  (4)  which 
contain  pictures  or  other  representations  of  a  scandalous  nature; 
(5)  which  are  identical  with,  or  so  nearly  resemble  as  to  be  easily 


382  NORWAY 

confounded  with,  marks  already  registered  for  the  same  class  of 
merchandise. 

But  the  marks  of  foreigners  may,  under  conditions  of  reci- 
procity, be  registered  in  the  form  registered  abroad,  even  though 
consisting  solely  of  numerals,  letters  or  words. 

Requirements. 

Certified  copy  of  home  registration,  legalized  by  Norwegian 
Consul ;  legalized  power  of  attorney ;  eleven  copies  of  mark  and 
two  electros  or  wood  cuts. 

Application  for  Protection  of  Trade  Mark  and  Its  Treatment. 

The  application  shall  comprise  and  be  accompanied  by : 

1.  A  letter  addressed  to  the  Patent  Office  stating: 

(a)     The  applicant's  name,  or  style  of  firm  and  residence. 
(6)     The  business  in  which  the  trade  mark  is  to  be  used. 
(c)     The  goods  or  classes  of  goods  for  which  registration 
is  desired. 

2.  A  representation  of  the  mark  not  exceeding  6.5  cm.  square 
for  word  marks,  and  10  cm.  square  for  other  marks,  and,  if 
necessary,  a  description  of  the  mark. 

3.  If  an  attorney  is  appointed,  a  power  of  attorney  accepted 
by  him. 

4.  A  fee  of  Kr.  30  for  the  registration  and  publication.     If 
the  mark  is  to  be  registered  in  more  than  one  class,  an  additional 
fee  of  Kr.  10  is  payable  for  each  additional  class. 

Kr.  10  is,  however,  refunded  to  the  applicant  in  respect  of 
each  class  in  which  he  has  applied  for  registration  but  in  which 
the  mark  has  not  been  registered. 

Before  registration  can  take  place  the  applicant  must  send  to 
the  Patent  Office  a  wood  block  or  electrotype  suitable  for  the 
printing  of  the  mark  and  ten  prints  of  the  mark  of  the  size  men- 
tioned under  2.  (Art.  11.) 

An  application  for  renewal  shall  comprise  the  particulars  men- 
tioned under  1  and  2  in  the  preceding  article  and  a  fee  of  Kr.  10 
for  each  class  in  which  renewal  is  desired. 

On  payment  of  an  additional  fee  of  total  Kr.  5  the  application 
for  renewal  may  be  filed  within  three  months  after  expiration  of 
the  period  of  protection. 

If  the  application  has  not  been  received  at  the  expiration  of 
the  period  of  protection,  the  Patent  Office  shall  send  notice  to  the 
proprietor  of  the  mark ;  omission  to  do  so  shall,  however,  not  in- 
volve any  responsibility.  (Art.  12.) 

Any  defects  in  the  application  shall  not  entail  any  change  as  to 
the  date  of  filing  when  such  defects  are  remedied  in  due  time. 

The  application  shall,  however,  not  be  considered  filed  until  re- 
ceipt of  the  representation  of  the  mark.  (Art.  13.) 


NORWAY  383 

The  Patent  Office  (1st  Section)  shall  treat  the  application  re- 
ceived in  accordance  with  the  rules  laid  down.  (Art.  14.) 

If  the  application  is  not  in  conformity  with  the  rules  laid  down, 
the  applicant  shall  be  notified  thereof  and  grounds  given,  and 
he  shall  be  requested  within  a  reasonable  lapse  of  time,  to  explain 
and  remedy  the  defects  mentioned.  (Art.  15.) 

After  the  expiration  of  this  respite  the  application  is  submitted 
to  the  decision  of  the  Patent  Office.  (Art.  16.) 

The  applicant  can  demand  a  fresh  investigation  by  the  Patent 
Office  (2d  Section)  regarding  a  refusal  of  registration. 

Such  demand  must  be  lodged  within  two  months  from  the  date 
on  which  the  notice  of  refusal  was  sent  him  from  the  office. 

A  fee  of  Kr.  20  is  payable  thereon.  If  such  fee  has  not  been 
received  before  the  expiration  of  such  delay,  the  demand  shall  be 
considered  as  not  having  been  filed.  (Art.  17.) 

The  decision  arrived  at  by  the  Second  Section  of  the  Patent 
Office  and  by  which  registration  is  refused,  shall  be  final. 
(Art.  18.) 

When  a  decision  is  arrived  at  regarding  registration,  the  Pat- 
ent Office  shall  enter  the  mark  in  the  Trade  Marks  Register,  issue 
a  public  notification  regarding  the  registration  in  the  Official 
Gazette,  and  in  the  journal  mentioned  in  the  law  relating  to  the 
Patent  office,  and  shall  issue  to  the  applicant  a  certificate  of  reg- 
istration. 

On  renewal  of  the  registration  public  notification  and  certifi- 
cate shall  likewise  be  issued.  (Art.  19.) 

Assignment. 

The  right  to  use  a  trade  mark  protected  by  registration  shall 
be  assigned  only  in  connection  with  the  business  in  which  it  is 
used. 

On  transfer  of  the  business  the  right  to  the  mark  is  vested  in 
the  new 'owner,  unless  otherwise  stipulated. 

Fees. 

For  each  application  the  fee  is  kr.  30,  with  the  addition  of  kr. 
10  for  each  exceeding  class  if  the  mark  is  to  be  registered  in 
more  than  one  class.  The  additional  fee  of  kr.  10  is,  however, 
refunded  in  respect  of  each  class  in  which  the  mark  is  not  regis- 
tered. (Arts.  11  and  13.) 

Classification  of  Goods. 

CLASS  1.  Mineral  raw  materials,  including  metals  unwrought 
or  half-wrought,  not  included  in  other  classes. 

CLASS  2.  Vegetable  and  animal  raw  materials,  unprepared  or 
half-prepared,  not  included  in  other  classes. 

CLASS  3.     Chemical  products   (not  included  in  other  classes) 


384  NORWAY 

for  industrial,  agricultural,  medical  and  photographic  use,  disin- 
fectants, dressings  (surgery),  artificial  and  natural  manure. 

CLASS  4.  Agricultural  and  horticultural  products,  such  as 
corn,  grain,  flour,  meal,  seed,  plants,  herbs,  flesh,  meat,  fish, 
poultry,  eggs,  game,  vegetables,  fruit,  butter,  cheese,  eatable  oils 
and  fats. 

CLASS  5.  Articles  of  food  for  men  and  animals  (not  included 
in  Classes  4,  22  and  23);  included  are:  bread,  etc.,  pastry, 
colonial  produce,  groceries  (tea,  coffee,  etc.),  yeast,  baking  pow- 
der, salt,  vinegar,  syrup,  honey,  spices. 

CLASS  6.  Prepared  article's  of  vegetable  or  animal  raw  ma- 
terials (not  included  in  other  classes)  for  clothing,  traveler's 
outfit,  etc.,  furniture  outfit,  upholstery;  manufactures  of  book- 
binding and  of .  portfolios-making ;  articles  of  celluloid  and  the 
like. 

CLASS  7.  Varnish,  wax,  oils  and  fats  not  eatable,  petroleum, 
tar,  resin,  rubber,  caoutchouc,  and  manufactures  of  such  sub- 
stance (if  not  included  in  other  classes),  f.  inst,  candles,  "make- 
fires";  fuel. 

CLASS  8.  Soap,  detergents  and  preparations  for  laundry  pur- 
poses. Perfumes,  paints,  and  other  toilet  articles. 

CLASS  9.  Colors  (not  ink),  cements,  artificial  finishing  means 
(appreture). 

CLASS  10.  Hardware,  haberdashers'  goods,  needles,  pins, 
fancy  goods ;  toys,  games,  playcards. 

CLASS  11.  Machinery,  tools  and  implements  with  accesories 
(not  included  in  other  classes)  ;  grinding  means  (emery,  etc.). 
In  this  class  are  also  included  printing  implements,  types,  elec- 
trotypes, lithographic  stones. 

CLASS  12.     Electric  machinery,  apparatus  and  accessories. 

CLASS  13.  Cordage,  cables,  fishing  lines,  fishing  nets ;  driving 
belts,  packing  materials,  insulating  material;  waste  (cotton 
waste).  .- 

CLASS  14.  Vehicles,  cycles,  autocars,  aeroplanes,  sporting 
articles  and  arms,  cutlery  and  edge  tools,  boats,  salvage  apparatus. 

CLASS  15.  Articles  of  metal  or  wood,  etc.,  for  domestic  pur- 
poses, such  as  furniture,  bedsteads  and  outfits,  kitchen  utensils, 
goods  made  by  coopers  and  by  basket  makers. 

CLASS  16.  Natural  and  artificial  building  material  and  other 
articles  for  building  purposes,  such  as  lighting,  heating  and 
cooking  (not  included  in  other  classes)  ;  linoleum,  paperhangings. 

CLASS  17.  Articles  of  paper  (not  included  in  other  classes), 
printings,  ink,  articles  for  advertising  purposes,  instruments  and 
apparatus  for  teaching,  school  fittings,  implements  for  gymnastic 
exercise ;  drawing  implements  and  tools. 

CLASS  18.  Photographic  instruments  and  accessories,  cine- 
matographic apparatus  and  films  therefor,  musical  instruments, 
gramophones,  etc.,  and  plates  therefor. 


NORWAY  385 

CLASS  19.  Scientific,  optical,  surgical,  medical,  etc.,  instru- 
ments and  apparatus. 

CLASS  20.  Watches  and  clocks,  goods  made  by  goldsmiths 
and  silversmiths,  plated  goods,  etc. 

CLASS  21.  Porcelain  and  earthenware,  ceramics,  articles  of 
glass. 

CLASS  22.  Chocolate,  cacao,  sweets,  drops  and  other  goods 
made  of  chocolate  and  of  sugar. 

CLASS  23.     Preserved  foods. 

CLASS  24.     Spirits  and  fermented  liquors,  mineral  waters,  etc. 

CLASS  25.     Tobacco  and  smoker's  articles. 

CLASS  26.     Articles  of  rubber,  caoutchouc  and  gutta-percha. 

CLASS  27.     Wood  pulp,  cellulose,  paper,  pasteboard. 

CLASS  28.     Matches. 

CLASS  29.     Explosives,  fireworks. 

CLASS  30.    Textile  goods. 

Infringement  of  Trade  Marks  Right,  and  Fraudulent  Marking 
of  Goods  and  Business  Names. 

Any  person  who,  on  goods  offered  or  intended  for  sale,  on  the 
packing  of  such  goods,  illegally  places : 

(a)  The  mark  protected  by  registration  by  any  other  person 
for  goods  of  the  same  or  of  a  similar  nature ; 

(b)  The  name  of  another  person  or  firm;  or 

(c)  Anything  which  in  the  trade  generally  is  likely  to  cause 
confusion  in  these  respects,  or  who  illegally  offers  or  sells  goods 
marked  in  this  manner,  may  by  prosecution  by  the  wronged  per- 
son be  condemned  to  lose  the  right  thereto. 

If  he  was  aware  of  the  rights  of  such  other  person,  he  shall 
be  punished  with  a  fine  or  imprisonment  not  exceeding  three 
months.  Both  in  this  case,  and  if  he  is  guilty  of  carelessness, 
he  shall  be  bound  to  make  good  the  damage  caused.  Official 
prosecution  shall  take  place  at  the  demand  of  the  wronged  per- 
son only.  (Art  22.) 

On  goods  which  are  offered  or  intended  for  sale,  on  the  pack- 
ing of  such  goods,  must  not  illegally  be  placed  marks  or  mount- 
ings which  within  the  business  circle  concerned  are  known  to 
be  the  special  distinguishing  sign  of  another  business  for  goods 
of  the  same  or  similar  nature  and  likewise  goods  marked  or 
mounted  in  such  manner  must  not  be  offered  or  sold  if  it  be 
supposed  they  are  likely  to  be  confused  regarding  the  firm  from 
which  such  goods  originate. 

Any  person  who  acts  in  contravention  thereof  may,  by  prose- 
cution by  the  wronged  person,  be  condemned  to  lose  the  right 
to  use  the  mark  or  sign  or  to  offer  the  goods. 

If  he  was  aware  of  the  rights  of  such  other  persons,  he  is  to 
be  punished  with  a  fine,  and  shall  be  bound  to  make  good  the 

25 


386  NORWAY 

damage  caused.  Official  prosecution  shall  take  place  at  the  de- 
mand of  the  wronged  person  only.  (Art.  23.) 

Any  person  who  on  goods  which  are  offered,  or  are  to  be 
offered  for  sale,  on  the  packing  of  such  goods,  places  his  name 
or  firm  name  in  such  a  manner  as  to  be  likely  to  be  confused 
with  a  distinguishing  sign  legally  used  by  any  other  person  for 
goods  of  the  same  or  similar  nature,  or  who  offers  or  sells  goods 
marked  in  such  manner  may,  by  prosecution  by  the  wronged 
person,  be  condemned  to  lose  the  right  thereto. 

If  his  intention  has  been  to  cause  such  confusion,  he  shall  be 
punished  with  a  fine,  and  shall  be  bound  to  make  good  the  dam- 
age caused.  Official  prosecution  shall  take  place  on  the  demand 
of  the  wronged  person  only.  (Art.  24.) 

On  goods  which  are  offered,  or  are  to  be  offered  for  sale,  must 
not  be  placed  any  incorrect  statement  as  to  the  place  of  origin 
of  such  goods,  or  any  statement  which  in  this  respect  is  likely 
to  cause  confusion,  nor  must  goods  marked  in  such  manner  be 
offered  or  sold. 

Any  person  acting  in  contravention  thereof,  may  be  bound 
over  to  desist  from  using  such  incorrect  statement  when  offering 
the  goods.  If  he  has  knowingly  been  making  use  of  such  in- 
correct statement  he  may  be  compelled  to  make  good  the  damage 
caused. 

If  it  has  been  his  intention  to  deceive  regarding  description, 
contents,  composition  or  value  of  such  goods,  he  shall,  in  addition, 
be  punished  with  a  fine. 

Under  this  provision  are  not  included  such  statements  of 
places,  which  in  accordance  with  commercial  usage  aims  at  the 
nature,  but  not  at  the  origin  of  such  goods. 

The  King  may,  however,  in  accordance  with  agreement  en- 
tered into  with  a  foreign  State,  stipulate,  that  the  importation 
into  this  Realm  of  goods,  having  such  statement  as  mentioned 
in  the  preceding  sub-section,  shall  be  prohibited  unless  the  goods 
are  accompanied  with  satisfactory  information  to  the  effect  that 
they  are  genuine  goods  originating  in  the  country  or  portion  of 
country  in  question.  The  King  may  also  forbid  the  offering  for 
sale  and  selling  within  the  Realm  of  goods  under  such  statements 
as  mentioned,  unless  the  goods  are  genuine,  and  coming  from  the 
country  or  portion  of  country  in  question. 

Transgression  of  the  prohibition  laid  down  in  the  preceding 
sub-section  shall  be  punished  with  a  fine.  (Art.  25.) 

Any  person  who  gives  his  enterprise  or  business  a  name  which 
is  likely  to  be  confused  with  the  name  already  by  right  employed 
by  another  person  for  his  enterprise  or  business  of  the  same  or 
similar  kind,  may  be  prosecuted  by  the  wronged  person  and  con- 
demned to  forfeit  such  name. 

If  it  has  been  his  intention  to  cause  such  confusion  he  shall 
be  punished  with  a  fine  and  bound  over  to  pay  any  damage 


NORWAY  387 

caused.  Official  prosecution  shall  take  place  at  the  demand  of 
the  wronged  person  only.  (Art.  26.) 

Any  person  who  has  made  use  of  goods  or  business  designa- 
tion against  the  provisions  of  the  present  law,  shall  alter  or  re- 
move such  designation  at  the  demand  of  the  wronged  person. 
If  removal  or  alteration  cannot  take  place,  the  confiscation  of 
the  articles  on  which  it  is  placed  may  be  demanded. 

The  confiscated  articles  may,  by  agreement  between  the  con- 
victed and  wronged  party,  be  handed  over  to  the  latter  as  part 
payment  for  compensation.  (Art.  27.) 

Prosecution  shall  take  place  at  the  Christiania  City  Court 
(Christiania  Byret).  Four  weeks'  notice  shall  be  given  irre- 
spective of  the  defendant's  place  of  residence.  Notification  to 
the  Patent  Office  shall  be  sent  to  the  Director.  (Art.  28.) 

If  a  person,  who  in  a  civil  action  is  prosecuted  for  Trade 
Mark  infringement,  should  base  his  defense  on  a  claim  that  the 
registration  is  invalid,  the  court  in  question  shall,  at  his  demand, 
eventually  allow  him  sufficient  time  for  obtaining  a  decision  as 
to  the  invalidity  of  the  registration.  (Art.  29.) 

Law  in  Force  in  Norway  to  Prevent  the  Sale  or  Importation  of 
Goods  Bearing  a  False  Indication  of  Origin. 

The  law  prohibits  the  sale  or  offering  for  sale,  but  not  the 
importation,  of  goods  bearing  a  false  indication  as  to  their  place 
of  origin.  No  steps  are  taken  to  prevent  the  importation  of 
goods  bearing  a  false  indication  of  origin.  There  are  no  require- 
ments as  to  the  marking  of  imported  goods  to  show  the  country 
or  place  of  origin  or  to  denote  that  they  are  foreign. 

Marking  Goods  :     "Registrert  Varemerke." 

DECISIONS. 
Right  to  a  Proper  Name  in  Norway. 

A  judgment  of  the  Municipal  Court  of  Christiania,  Norway, 
adjudicates  the  question  of  the  right  of  a  party  to  control  the 
use  of  his  own  name  in  connection  with  the  sale  of  goods. 

A  physician  of  that  city  had  ordered  glass  syringes  for  the 
use  of  his  patients,  that  were  of  a  peculiar  shape  and  size  and 
had  his  name  etched  on  the  side.  He  had,  by  special  agreement, 
given  to  the  proprietor  of  a  drug  store,  permission  to  sell  these 
syringes  with  his  name  upon  them.  A  dealer  in  surgical  instru- 
ments began  to  sell  the  article  under  the  name  of  the  physician, 
but  without  his  authorization,  and  the  physician  was  awarded  a 
judgment  against  the  dealer,  who,  it  was  declared,  had  no  right 
to  sell  the  syringes  with  the  former's  name  upon  them.  The 
physician,  it  was  said,  had  no  exclusive  right  in  the  design  of 
the  article  and  anybody  could  sell  it,  but  he  had  the  right  to 


388  OMAN 

control  the  use  of  his  name  and  to  prevent  the  use  thereof  with- 
out his  permission. 

Trade  Mark  in  the  Shape  of  a  Bottle. 

The  Supreme  Court  of  Christiania,  Norway,  has  rendered  a 
decision  determining-  the  extent  to  which  the  shape  of  a  bottle 
or  other  receptacle  for  goods  can  be  protected  in  Norway  as  a 
trade  mark.  A  French  manufacturer  had  registered  in  Nor- 
way as  his  trade  mark  for  pharmaceutical  preparations  a  tri- 
angular bottle  intended  to  enclose  the  drugs  and  medicines  of 
his  manufacture.  It  was  held  that,  by  virtue  of  such  registra- 
tion, he  could  not  prevent  a  Norwegian  house  from  using  bottles 
of  the  same  shape  for  the  sale  of  the  like  products.  Inasmuch 
as  the  Norwegian  law  protected  only  marks  destined  to  be  placed 
upon  the  merchandise  themselves  or  upon  the  receptacles  con- 
taining them,  it  was  considered  that  the  alleged  mark  was  not 
such  as  could  be  protected  under  the  Norwegian  law.  It  was 
denied  that  the  form  of  package  alone,  and  without  any  other 
mark  of  the  kind  prescribed  by  the  law,  could  be  protected  as  a 
trade  mark  or  be  subject  to  the  rules  governing  such.  It  was 
held  that  the  registration  conferred  only  such  a  monopoly  in 
the  mark  as  would  enable  the  registrant  to  prevent  any  other 
from  placing  the  design  or  figure  of  a  triangular  bottle  as  a 
trade  mark  upon  his  products  or  upon  the  packages  containing 
them,  but  could  not  confer  a  monopoly  in  the  use  of  a  package 
of  that  shape,  there  being  no  question  of  trade  mark  rights  in- 
volved therein.  (La  Propriete  Industrielle,  1906,  p.  9.) 


OMAN 

Oman,  in  southeast  Arabia,  is  an  independent  kingdom  or 
principality  having  a  coast  line  of  about  1,000  miles  along  the 
Persian  Gulf,  extending  from  the  vicinity  of  Ras  Mussendom 
on  the  north  to  Dhofar  on  the  south  and  being  bounded  towards 
the  interior  by  the  Great  Arabian  Desert.  It  has  approximately 
an  area  of  81,000  square  miles,  and  a  population  of  500,000. 
Muscat,  the  capital,  is  a  walled  town  of  about  25,000  inhabitants, 
with  a  small,  but  a  well  sheltered  harbor. 

The  imports  consist  principally  of  rice,  piece  goods,  cotton, 
sugar,  grain,  oil,  coffee,  arms,  ammunition  and  silk. 

The  chief  product  of  the  country  is  fruits.  Fresh  dates  are 
taken  by  America;  dry  dates,  pomegranates,  limes,  etc.,  are  ex- 
ported chiefly  to  India.  The  textile  manufactures  of  the  country, 
formerly  extensive,  have  now  been  killed  by  the  cheaper  looms 
of  Manchester  and  Bombay. 


ORANGE  RIVER  COLONY  389 

-There  is  no  ordinance  relating  to  trade  marks,  but  advertise- 
ment of  ownership,  registration  at  the  customs  house  of  Muscat 
or  public  use  of  a  mark  would  be  considered  as  ground  for  rais- 
ing action  against  infringement. 


ORANGE  RIVER  COLONY 

This  Colony  is  bounded  on  the  south  by  the  Orange  River, 
which  divides  it  from  Cape  Colony,  on  the  east  by  British  Basu- 
toland  and  Natal,  on  the  north  by  the  Transvaal,  and  on  the 
west  by  the  Transvaal  and  Griqualand  West.  The  area  is  esti- 
mated at  about  50,000  square  miles.  The  total  population  in 
1911  was  estimated  at  390,000,  of  which  number  about  145,000 
were  whites.  It  is  in  the  main  a  pastoral  country,  but  increas- 
ing areas  are  being  cultivated,  and  a  considerable  export  trade 
in  maize  is  developing.  The  rearing  of  sheep,  goats,  horses, 
horned  cattle,  mules  and  ostrich  farming  is,  however,  the  prin- 
cipal industry.  There  are  extensive  deposits  of  coal  of  good 
quality,  and  precious  stones  found  here. 

MONEY  WEIGHTS  AND  MEASURES — Same  as  Great  Britain. 

Law. 

Provision  is  made  in  the  Orange  River  Colony  for  the  reg- 
istration of  trade  marks  by  Statute  63  of  1891,  as  amended  by 
Act  No.  13  of  1893.  Regulations  referring  to  the  registration 
of  trade  marks,  August  5,  1903. 

Duration. 

No  provision  is  made  in  the  Act  for  the  period  of  protection 
which  registration  affords,  but  it  is  presumed  that  it  was  the 
intention  of  the  legislature  that  it  should  be  for  a  period  of  14 
years  as  in  the  schedule  of  fees  to  the  Act,  provision  is  made  for 
the  extension  of  the  right  to  any  trade  mark  after  the  expiration 
of  14  years  by  the  payment  of  a  fee  of  £2.  It  may  consequently 
be  taken  that  registration  is  perpetual,  subject  to  the  payment 
of  the  renewal  fee  at  the  expiration  of  each  14  years.  No  pro- 
vision is  made  in  the  law  or  in  the  rules  issued  under  it  for  the 
period  within  which  the  renewal  fee  must  be  paid,  nor  is  the 
Registrar  given  any  authority  to  grant  an  extension  of  time 
within  which  to  pay  the  renewal  fee ;  it  is  therefore  recommended 
that  the  tax  should  be  paid  before  the  expiration  of  14  years. 
The  certificate  of  registration  should  be  produced. 

What  May  Be  Registered. 

(a)  The  name  of  an  individual  or  firm  printed,  stamped  or 
woven  in  a  peculiar  or  distinctive  manner;  or 


ORANGE  RIVER  COLONY 

(b)  A  written  signature  or  copy  of  a  written  signature  of 
the  individual  or  firm  applying  for  the  registration  thereof  as  a 
trade  mark;  or 

(c)  A  distinguishing  device,  mark,  brand,  label,  or  a  word 
or  words  not  in  daily  use. 

And  to  any  or  more  particulars  may  be  added  letters,  words 
or  figures,  or  combinations  of  words,  letters  or  figures,  or  any 
of  them,  provided,  however,  that  any  special  and  distinguishing 
word  or  words,  letter,  figure  or  combination  of  letters  or  figures 
or  of  letters  and  figures  used  as  a  trade  mark  before  Act  No.  13 
of  1893  was  passed  may  be  registered  as  a  trade  mark  under  this 
or  any  other  law. 

No  mark  will  be  accepted  for  registration  unless  consisting 
of  or  containing  one  of  the  above  essentials. 

Series  of  Marks. 

There  is  no  provision  made  for  the  registration  of  a  series  of 
marks. 

Mode  of  Application. 

In  order  to  obtain  registration  of  a  trade  mark,  an  application, 
accompanied  by  an  affidavit,  must  be  filed  with  the  Registrar 
of  Deeds  at  Bloemfontein.  Both  must  be  written  on  durable 
paper,  foolscap  size,  having  at  the  left  hand  side  a  margin  of 
not  less  than  two  inches. 

The  application  must  be  signed  by  the  applicant  himself  and 
cannot  be  signed  by  an  agent  under  power  of  attorney.  Where 
the  applicant  is  a  firm  the  application  and  affidavit  must  be 
signed  by  a  partner  of  the  firm  who  should  add  the  words  ''a 
member  of  the  firm"  after  his  signature,  and  in  the  case  of  a 
Company  by  the  Secretary  or  other  proper  official,  adding  after 
his  signature,  the  words  "on  behalf  of  the  Company." 

The  affidavit  if  made  in  the  Colony  must  be  signed  before  a 
resident  Magistrate  or  Justice  of  the  Peace,  if  made  elsewhere 
it  must  be  signed  before  a  Magistrate  or  a  Justice  of  the  Peace 
whose  official  seal  must  be  affixed  to  the  affidavit.  In  default  of 
such  official  seal  the  signature  of  the  Magistrate  or  Justice  of 
the  Peace  must  be  authenticated  by  the  proper  officer  authorized 
for  that  purpose  in  the  country  where  the  affidavit  is  signed. 

For  the  purpose  of  registration  of  a  trade  mark,  the  goods  are 
classified  according  to  the  schedule  provided,  and  in  the  event  of 
any  doubt  arising  as  to  the  classification  of  any  special  article 
the  Registrar  of  Deeds  decides  the  point.  It  is  advisable  to 
leave  the  number  of  the  class  or  classes  blank  in  the  application 
form. 

As  thirty  days  must  elapse  between  the  day  on  which  the 
notice  of  application  first  appears  in  the  Government  Gazette 
and  the  day  on  which  the  application  for  registration  of  the  mark 


PANAMA  391 

will  be  made,  a  period  of  six  weeks  is  the  average  time  required 
fof  effecting-  registration. 

Assignments, 

The  right  to  the  use  of  a  trade  mark  is  assignable  by  an  in- 
strument in  writing.  No  special  form  is  provided  by  the  Act  or 
Rules. 

Where  a  person  becomes  entitled  to  a  registered  trade  mark 
by  assignment,  or  otherwise,  a  request  for  the  entry  of  his  name 
in  the  register  as  proprietor  of  the  trade  mark  shall  be  addressed 
to  the  Registrar.  The  certificate  of  registration  should  be  pro- 
duced. 

Documents  Required. 

Application  form ;  affidavit ;  power  of  attorney ;  one  block  or 
electro  of  the  trade  mark;  four  representations  of  the  trade 
mark.  (Forms  for  application  may  be  obtained  from  B.  Singer's 
Offices.) 

Classification. 

Practically  the  same  as  in  Great  Britain. 
Marking  Goods :     "Registered  Trade  Mark." 


PANAMA 

The  Republic  of  Panama  (established  in  1903)  extends  over 
the  area  known  as  the  Isthmus  of  the  same  name,  and  lies  be- 
tween the  Caribbean  Sea  on  the  north  and  the  Pacific  Ocean  on 
the  south.  Up  to  1903  it  formed  a  part  of  the  Confederation 
known  as  the  Republic  of  Colombia,  and  it  has  but  three  towns 
of  any  importance — the  port  of  Colon  and  Bocas  del  Toro  on 
the  north  and  that  of  Panama  on  the  south.  The  area  is  about 
32,000  square  miles  and  the  population  is  estimated  at  450,000. 
The  completion  of  the  Panama  Canal  makes  both  Colon  and 
Panama  very  important  places,  as  Colon  is  only  2,000  miles  from 
New  York  and  4,000  from  Southampton,  and  the  trade  of  the 
Pacific  Coast  of  the  United  States  and  the  West  Coast  of  South 
America  will  necessarily  pass  through  the  Canal.  The  French 
company  established  by  the  late  M.  Ferdinand  de  Lesseps  sold 
its  interests  in  the  Canal  to  the  United  States  Government  in 
1904,  and  the  work  on  the  Canal  was  restarted  on  the  1st  of 
July  of  that  year. 

Under  the  terms  of  the  treaty  between  the  United  States  and 
the  Republic  of  Panama,  the  latter  has  ceded  to  the  former  a 
strip  of  land  10  miles  wide,  through  which  the  Canal  passes.  The 
United  States  has  absolute  sovereignty  in  this  territory  and  has 
organized  a  separate  government. 


392  PANAMA 

MONEY — Dollar    (peso)=about  2s.=48   cents  U.   S. ;  balboa 
(gold)  =2  silver  pesos. 
WEIGHTS  AND  MEASURES — The  metric  system. 

Laws. 

January,  1905,  No.  24  of  1908,  and  29th  day  of  January,  1911. 

Duration. 

The  property  in  a  mark  pf  manufacture  or  trade  is  acquired 
only  for  a  term  of  ten  (10)  years;  however,  it  may  be  renewed 
indefinitely  for  equal  terms.  (Art.  4.) 

Every  mark,  the  renewal  of  which  not  having  been  duly  so- 
licited (Art.  18  of  Law  24  of  1908),  shall  be  cancelled,  but  dur- 
ing the  following  two  years  only  the  person  in  whose  favor  the 
mark  was  registered  shall  have  the  right  to  register  it  again. 
(Art.  10.) 

What  May  Be  Registered. 

There  is  considered  as  a  mark  of  manufacture  any  phrase  or 
sign  used  for  distinguishing  or  determining  some  special  product 
intended  for  an  industry  or  a  trade,  and  as  a  mark  of  trade  the 
distinctive  phrase  or  sign  of  some  article  of  commerce  intended 
for  a  person  or  a  commercial  house.  (Art.  1.) 

Petitions  for  the  registration  of  marks  which  bear  names, 
designation  of  firms,  photographs  or  facsimiles  of  signatures 
other  than  those  of  the  party  soliciting  the  registration,  shall  be 
accompanied  by  the  relative  authorization  of  their  owners,  or 
of  the  heirs,  which  shall  expressly  show  the  authority  for  the  use 
of  such  name,  photograph,  designation  of  firm  or  facsimiles  of 
signatures.  Registrations  effected  in  contravention  of  the  article 
shall  be  valueless.  (Art.  8.) 

The  name  of  the  merchant  or  of  a  commercial  or  industrial 
society  shall  in  itself  constitute  ownership.  The  title  or  designa- 
tion of  a  firm  doing  business  in  any  of  the  commercial  centers 
of  the  Republic  shall  enjoy  equal  rights  within  the  respective 
business  locality,  pending  registration  in  accordance  with  the 
regulations  governing  the  registration  of  national  marks.  (Art 
13.) 

There  is  prohibited  in  marks  of  manufacture  or  trade  the  use 
of  the  coat-of-arms  of  the  Republic  and  of  the  National  Flag, 
also  the  use  of  drawings,  engravings  and  vignettes  which  are 
contrary  to  morality. 

Marks  shall  not  be  registered  which  consist  exclusively  of 
information  concerning  class,  date  and  place  of  manufacture,  or 
concerning  quality,  uses  and  condition  of  price,  quantity  and 
weight  of  the  merchandise.  (Art.  9.) 


PANAMA  393 

Mode  of  Application. 

Every  citizen  of  Panama  or  foreigner  who  is  the  owner  of  a 
mark  of  manufacture  or  trade  may  obtain  the  exclusive  right  to 
use  it  in  the  territory  of  the  Republic,  by  means  of  the  formality 
of  registration  in  the  respective  office,  for  which  purpose  the 
following  procedure  shall  be  observed : 

The  interested  party  shall  present  either  himself  or  through 
a  legally  appointed  attorney,  at  the  Ministry  of  the  Interior  an 
application  for  the  registration  of  the  mark  of  manufacture,  ex- 
plaining in  an  entirely  clear  manner  the  distinctive  sign  which 
constitutes  it,  the  product  or  article  to  which  it  refers,  and  the 
place  where  the  latter  is  manufactured. 

The  application  shall  be  made  on  stamped  paper  of  the  first 
class,  and  it  shall  be  accompanied  by  two  specimens  of  the  mark 
or  of  its  representation  in  the  form  of  a  drawing  or  of  an  en- 
graying.  To  each  of  said  specimens  shall  be  affixed  a  stamp 
with  the  national  arms  ("timbre")  of  the  first  class,  and  it  shall 
be  signed  on  the  back  by  the  interested  party,  with  note  of  the 
date  of  application. 

The  application  shall  be  published  for  two  consecutive  times 
in  the  Gaceta  Oficial,  and,  if  no  objection  is  presented  in  op- 
position within  thirty  (30)  days  after  the  first  publication,  the 
registration  of  the  mark  will  be  made,  if  it  is  a  mark  of  manu- 
facture ;  if  it  is  a  mark  of  trade,  the  registration  will  not  be  made 
until  sixty  (60)  days  after  the  date  of  the  first  publication.  One 
certificate  of  registration  shall  be  sent  to  the  interested  party  and 
it  will  constitute  the  title  of  property  in  the  mark  in  question. 
Such  certificate  shall  be  issued  on  stamped  paper  of  the  first 
class  and  it  shall  be  published  two  times  in  the  Gaceta  Oficial. 
(Art.  3.) 

In  case  of  opposition  to  the  registration  of  a  mark  the  Execu- 
tive shall  decide  the  matter  in  the  shortest  time  if  it  be  not  in- 
dispensable to  await  proofs  to  justify  the  opposition,  in  which 
case  a  prudent  period,  in  the  judgment  of  the  Executive,  shall 
be  granted.  (Art.  23.) 

The  cost  of  publishing  the  application  in  the  official  periodi- 
cal shall  be  at  the  expense  of  the  interested  party.  (Art.  4.) 

Requirements. 

Power  of  attorney,  legalized;  four  copies  of  the  mark;  two 
electrotypes ;  a  certified  copy  of  home  registration,  legalized. 

(Forms  for  application  may  be  obtained  from  B.  Singer's 
Offices.) 

Fees. 

Twenty-five  dollars  for  the  first  term,  and  $20.00  for  each  re- 
newal. 


394  PANAMA 

Infringements  and  Penalties. 

Usurpation  of  the  right  of  ownership  of  a  trade  or  commer- 
cial mark  shall  incur  a  fine  of  from  $25  to  250  balboas,  or  arrest 
of  from  two  to  three  months,  in  addition  to  the  confiscation  of 
the  goods  according  to  Article  27  of  Law  24  of  1908.  (Art.  16.) 

The  manufacturer  and  the  importer  as  well  as  the  vendor  are 
responsible  for  the  undue  use  of  a  trade  or  commercial  mark ;  in 
consequence  they  shall  incur  the  established  penalties: 

1.  Those  who  falsify  or  adulterate  in  any  way  whatsoever  a 
trade  or  commercial  mark. 

2.  Those  who  use  in  their  own  products  or  articles  of  com- 
merce a  mark  identical  with  or  substantially  similar  to  a  mark 
owned  by  another  person. 

3.  Those   who  make  use,  in  any  manner  whatsoever,  of  a 
mark  which  obviously  imitates,  for  any  reason  whatever,  a  mark 
registered  in  favor  of  another  person. 

4.  Those  who  knowingly  sell,  offer  in  sale,  or  agree  to  sell 
or  put  into  circulation,  articles  bearing  falsified  or  fraudulently 
applied  marks. 

5.  Those  who  with  intent  to  defraud,  mark  or  cause  articles 
to  be  marked  with  false  labels  or  designations,  whether  it  be  in 
respect   of  their   nature,    quality,   quantity,   number,   weight  or 
measurement,  or  of  the  country  of  origin  or  manufacture;  or 
use  the  expression  Marca  Registrada  (Registered  Mark)  or  its 
equivalent  M.  R.   (R.  M.)   when  the  mark  has  not  been  regis- 
tered. 

6.  Those  who  knowingly  sell  or  offer  to  sell  articles  with 
the  false  indications  to  which  the  foregoing  section  refers.    (Art. 

17.) 

For  a  repetition  of  the  offense  the  penalty  shall  be  doubled. 
(Art.  18.) 

The  use  of  a  false  mark  on  one  article  only  shall  be  sufficient 
to  show  violation  or  usurpation  of  the  right.  (Art.  19.) 

Registered  marks  which  are  applied  to  articles  other  than 
those  expressed  in  the  corresponding  certificate  shall  not  be  con- 
sidered as  registered.  (Art.  20.) 

It  is  not  necessary  to  be  the  owner  of  the  mark  in  order  to 
claim  against  its  falsification  or  imitation.  Any  manufacturer 
or  consumer  who  considers  himself  injured  by  a  falsification  or 
imitation  or  by  fraud  as  mentioned  in  the  present  law  shall  have 
the  right  to  accuse  and  prosecute.  When  the  accusation  has 
not  been  made  by  the  owner  of  the  mark,  the  articles  confiscated 
shall  be  for  the  benefit  of  the  public  treasury.  (Art.  21.) 

In  case  of  confiscation  the  marks  which  have  not  been  in  use 
shall  be  destroyed,  and  those  affixed  to  merchandise  shall  be  de- 
stroyed or  annulled.  (Art.  22.) 


PANAMA  395 

Priority. 

The  person  or  the  company  being  the  first  to  make  use  of  a 
mark  of  manufacture  or  trade  is  the  only  one  who  has  the  right 
to  acquire  the  property  to  it.  In  case  of  dispute  between  two 
or  more  possessors  of  the  same  mark,  the  property  will  devolve 
upon  the  first  possessor,  and,  if  the  duration  of  possession  should 
be  the  same,  to  the  first  one  who  applied  in  the  respective  office 
for  its  registration.  (Art.  11.) 

The  registration  of  marks,  no  matter  whether  marks  of  manu- 
facture or  of  trade,  shall  be  made  without  previous  examination 
respecting  the  usefulness  of  the  article,  and  of  the  quality  and 
properties  of  the  products  for  which  they  are  intended,  at  ap- 
plicant's exclusive  responsibility  and  reserving  always  the  rights 
of  third  parties. 

Law  in  Force  in  Panama  to  Prevent  the  Sale  or  Importation  of 
Goods  Bearing  a  False  Indication  of  Origin. 

There  is  no  law  preventing  the  importation  and  sale  of  goods 
bearing  a  false  indication  of  origin.  There  are  no  regulations 
as  to  the  marking  of  imported  goods  to  show  the  country  or 
place  of  origin  or  to  denote  that  they  are  foreign. 

Marking  Goods :    "Marca  Registrada"  or  "M.  R." 

Assignment. 

The  transfer  of  a  trade  mark  shall  be  recorded  at  the  office 
where  it  is  registered,  otherwise  the  right  to  use  it  shall  not  be 
conveyed  to  the  purchaser  or  assignee. 

Comment  on  New  Trade  Mark  Law. 

The  Panama  trade  mark  law  of  1908  has  been  materially  modi- 
fied by  an  Act  made  effective  on  January  29,  1911.  The  pro- 
visions of  the  new  Act,  both  in  the  greater  safeguards  thrown 
around  the  registration  of  trade  marks  and  in  the  penalties  pro- 
vided for  infringement,  bring  the  legislation  on  this  important 
subject  more  nearly  into  agreement  with  that  now  in  force 
among  English-speaking  peoples. 

For  the  registration  of  firm  names,  portraits  or  facsimile  sig- 
natures, other  than  those  of  the  applicant,  it  is  necessary  to  ob- 
tain the  authorization  of  those  whose  names,  portraits  or  signa- 
tures are  concerned,  or  of  their  heirs,  without  which  authority 
no  registration  shall  be  made  or  if  made  shall  be  void.  This 
provision  is  taken  from  the  law  of  the  Argentine  Republic.  The 
United  States  law  has  a  like  clause  relating  to  the  portraits  of 
living  persons.  Marks  indicating  the  kind  of  goods,  the  date  or 
place  of  manufacture,  or  the  quality,  price  or  quantity  can  not 
be  registered  as  trade  marks. 

After  the  lapse  of  a  trade  mark  registration  and  the  failure 


396  PANAMA 

of  the  owner  to  renew  it,  the  mark  can  not  be  registered  by 
any  other  than  the  original  registrant,  within  two  years  of  such 
expiration.  This  provision  is  adopted  from  the  German  law  and 
is  intended  to  prevent  the  theft  of  trade  marks  that  have  been 
allowed  to  elapse  by  oversight,  or  through  the  inattention  of 
the  owners  of  the  marks  or  of  their  agents. 

The  name  of  a  trader  or  of  a  commercial  or  manufacturing 
company  constitutes  a  species  of  property  not  further  referred 
to  in  the  Act,  but  since  nothing  is  said  of  the  registration  of 
such  names,  it  may  be  presumed  that  they  are  protected  as 
property,  without  registration.  In  so  far  as  concerns  the  sign 
or  trade  name  used  upon  a  commercial  establishment,  the  like 
right  may  be  obtained  but  only  for  the  locality  where  the  busi- 
ness is  carried  on  and  only  by  means  of  a  registration  made  in 
accordance  with  the  provisions  of  the  trade  mark  law.  Corpor- 
ations have  the  same  rights  in  their  names  as  individuals. 

The  misappropriation  of  trade  marks  is  punished  by  a  fine  of 
five  to  two  hundred  and  fifty  balboas  and  imprisonment  of  one 
to  three  months,  in  addition  to  the  confiscation  of  the  merchan- 
dise provided  in  the  old  Act.  They  are  held  to  be  infringers 
who  counterfeit  a  mark  or  who  place  upon  their  products,  or 
upon  articles  in  which  they  trade,  a  mark  identical  with,  or  sub- 
stantially similar  to,  the  mark  belonging  to  another  person ;  those 
who  knowingly  sell  or  place  on  sale  articles  bearing  counterfeit 
or  fraudulent  marks ;  those  who,  with  fraudulent  intent,  place 
upon  merchandise,  labels  or  false  designations  concerning  their 
nature,  quality,  quantity,  number,  weight  or  measure,  or  the 
country  of  their  production  or  manufacture,  or  make  false  use 
of  the  term  "Mark  Registered,"  or  who  knowingly  sell  or  place 
on  sale  articles  bearing  such  false  markings.  The  penalties  are 
doubled  for  the  second  offense.  Proof  of  the  application  of 
the  infringing  mark  to  a  single  article  is  sufficient  to  constitute 
infringement. 

In  order  to  prosecute  for  counterfeiting  or  imitation  of  a 
mark  registered,  it  is  not  necessary  that  the  plaintiff  be  the 
owner  of  the  mark.  Any  manufacturer  or  consumer  who  shall 
judge  himself  injured  by  the  counterfeit,  imitation  or  fraud 
mentioned,  has  the  right  to  do  this,  but  where  the  prosecutor 
is  not  the  owner  of  the  mark,  the  proceeds  from  the  sale  of  the 
confiscated  goods  must  be  paid  into  the  public  treasury. 

Procedure  is  provided  for  opposing  the  registration  of  trade 
marks  and  for  the  taking  of  evidence  to  substantiate  the  facts 
alleged  by  the  opponent. 

In  case  of  infringement,  complaint  is  made  to  a  competent 
official  who  must  at  once  proceed  to  the  place  where  the  counter- 
feits are  to  be  found.  He  must  seize  the  counterfeit  goods  and 
make  an  inventory  and  appraisal  thereof.  The  complainant 
must  within  three  days  thereafter  deposit  as  a  guaranty  of  good 


PARAGUAY  397 

faith  and  as  security  for  damages,  an  amount  equal  to  one-third 
of  the  value  of  the  goods  seized,  in  default  of  which,  the  pro- 
ceeding- shall  lapse;  and  if  it  shall  appear  that  the  seizure  was 
without  justification,  the  complainant  shall  be  liable  to  a  penalty 
of  fifteen  to  fifty  balboas  and  damages.  After  this  has  been 
done,  the  official  shall  report  the  case  to  the  judge  of  the  proper 
circuit,  who  shall  determine  the  rights  of  the  parties,  as  dis- 
closed by  the  record. 


PARAGUAY 

This  Republic  is  situated  in  the  central  part  of  South  Amer- 
ica, is  bounded  on  the  north  by  Bolivia,  on  the  south  and  east 
by  Brazil,  and  on  the  southeast,  south  and  west  by  Argentine. 
The  area  is  stated  at  about  98,000  square  miles.  The  population 
is  estimated  to  be  about  650,000,  including  50,000  Indians,  a 
great  part  of  whom  are  in  a  savage  state. 

The  country  is  rich  in  woods  of  all  kinds;  iron,  copper  and 
other  minerals  exist,  but  do  not  repay  the  trouble  of  extracting 
them,  it  is  said;  cotton  is  indigenous  and  the  Ramie  jute,  mapojo 
and  other  fibrous  plants,  the  latter  growing  luxuriously  and 
being  used  by  the  natives  in  the  manufacture  of  clothing. 

Sugar  growers  are  as  numerous  as  the  agriculturists  in  the 
province  of  Caraguatay,  for  sugar-cane,  tobacco,  maize  and 
mandioca  are  grown  by  all  of  them.  Nearly  all  the  sugar  con- 
sumed in  this  country  is  imported.  The  greatest  part  of  the 
juice  of  the  sugar-cane  is  employed  in  distilling  spirits. 

The  imports  consist  of  general  provisions,  wines  and  spirits, 
cotton  goods,  hardware  of  all  kinds,  furniture  and  clothing,  one- 
third  of  which  comes  from  Great  Britain. 

MONEY — The  peso=100  centavos=4s.  (nominal  value)=96 
cents  U.  S.  The  currency  of  the  paper  dollar=8s.  (about)  = 
$2.02  U.  S. 

WEIGHTS  AND  MEASURES — The  metric  system  has  been 
adopted. 

Law. 

Law  of  July  6,  1899. 

Duration. 
Ten  years,  renewable. 

What  May  Be  Registered. 

Trade  marks  are  names,  stated  in  a  special  form,  of  objects 
or  of  persons,  emblems,  monograms,  engravings  or  prints,  seals, 
vignettes,  reliefs,  letters  and  numbers  of  a  particular  design,  re- 


398  PARAGUAY 

ceptacles  or  wrappers,  and  any  other  signs  intended  to  distin- 
guish manufactured  products  or  articles,  of  commerce.  (Art.  1.) 
Trade  marks  can  be  affixed  either  upon  the  receptacles,  wrap- 
pers, or  the  articles  themselves.     (Art.  2.) 

What  Cannot  Be  Registered. 

The  following-  shall  not  be  considered  as  trade  marks : 

1.  Letters,  words,  names,  or  titles  used  or  to  be  used  by  the 
Government. 

2.  The  form  or  shape  given  to  the  product  by  the  manufac- 
turer thereof. 

3.  The  color  of  the  product. 

4.  Words  and  expressions  which  have  become  of  general  use. 

5.  The  designations  usually  employed  to  indicate  the  nature 
of  the  product  or  the  class  to  which  it  belongs. 

6.  Drawings  or  expressions  contrary  to  good  morals. 

Requirements. 

Applications  for  trade  marks  shall  be  accompanied  by  the  fol- 
lowing papers: 

1.  Two  copies  of  the  trade  mark  to  which  the  application 
refers. 

2.  Description,  in  duplicate,  of  the  trade  mark,  if  it  consists 
of  figures  or  emblems  indicating  the  class  of  objects  for  which 
the  trade  mark  is  intended  and  whether  it  applies  to  manufac- 
tured products  or  articles  of  commerce. 

3.  A  receipt  showing  that  the  amount  of  the  tax  established 
by  Article  19  of  the  present  law  has  been  paid  in  the  office  of  the 
Treasurer  of  the  Board  of  Public  Credit,  with  the  approval  of 
the  Comptroller  of  the  Treasury. 

4.  A  power  of  attorney  executed  and  legalized  in  due  form  of 
law  in  case  the  application  is  not  made  personally  by  the  interested 
party.     (Art.  13.) 

(Forms  for  application  may  be  obtained  from  B.  Singer's 
Offices.) 

Mode  of  Application. 

A  record  of  all  the  applications  filed  shall  be  kept  in  a  book, 
the  pages  of  which  shall  be  numbered  and  signed  by  the  Secre- 
tary of  the  Treasury,  briefly  stating  the  contents  of  the  applica- 
tion and  the  date  and  hour  of  filing. 

This  record  shall  be  signed  by  the  President  of  the  Board  of 
Public  Credit  (or  in  his  absence  by  another  official  of  the  Board), 
the  Secretary,  and  the  applicant,  and  the  latter  shall  be  given,  if 
he  so  desires,  a  certified  copy  thereof,  written  on  a  sheet  of  50- 
cent  stamped  paper.  (Art.  14.) 

Preference  for  the  ownership  of  a  trade  mark  shall  be  gov- 


PARAGUAY  399 

erned  by  the  day  and  hour  on  which  the  application  was  filed. 
(Art.  15.) 

A  certificate  of  trade  mark  to  be  issued  by  the  Bureau  of 
Patents  shall  consist  of  a  certified  copy  of  the  decree  by  which 
it  was  granted,  accompanied  by  a  duplicate  of  the  description 
and  the  drawings.  The  certificate  shall  be  issued  in  the  name 
of  the  nation,  and  shall  be  authorized  by  the  signatures  of  the 
President,  and  Secretary  of  the  Board  of  Public  Credit,  and 
with  the  seal  of  the  Board.  (Art.  16.) 

An  appeal  may  be  taken  to  the  Secretary  of  the  Treasury 
within  the  period  of  ten  days,  against  the  decision  of  the  Board 
of  Public  Credit  denying  the  ownership  of  a  trade  mark,  and 
the  Secretary  of  the  Treasury  shall  affirm  or  repeal  the  decision 
after  hearing  the  Solicitor-General.  (Art.  17.) 

The  Board  of  Public  Credit  shall  keep  a  book  in  which  all 
concessions  of  trade  marks  shall  be  inscribed  in  their  regular 
order;  and  the  President  of  the  Board  shall  send  every  three 
months  to  the  Secretary  of  the  Treasury  a  statement  of  the  cer- 
tificates granted  and  denied,  giving  in  each  case  the  respective 
dates.  These  statements  shall  be  published  in  the  newspapers. 
(Art.  18.) 

A  tax  or  fee  of  $50.00  shall  be  paid  for  the  registration  of  all 
trade  marks  and  the  certificates  thereof. 

For  any  certified  copy  of  the  said  certificates  which  may  be 
desired  thereafter  an  additional  fee  of  $5.00  shall  be  paid,  this 
fee  not  including  the  value  of  the  stamped  paper,  which  shall  be 
in  this  case  one  dollar  for  the  first  folio  and  twenty-five  cents 
for  each  additional  one.  (Art.  19.) 

The  trade  marks  for  which  certificates  have  been  issued  shall 
be  kept  in  the  archives  of  the  Board  of  Public  Credit.  (Art.  20.) 

Assignment. 

The  sale  or  transfer  of  the  establishment  where  the  article  is 
produced  carries  with  it  the  trade  mark,  if  not  provided  other- 
wise. The  assignee  shall  have  the  right  to  use  the  trade  mark, 
even  if  consisting  of  the  name  of  the  assignor,  or  of  someone 
else,  as  freely  as  the  assignor  himself  might  personally  have 
done,  with  no  other  restrictions  than  those  expressly  set  forth 
in  the  deed  of  sale  or  assignment.  (Art.  8.) 

The  transfer  of  a  trade  mark  shall  be  recorded  at  the  office 
where  it  is  registered ;  otherwise  the  right  to  use  it  shall  not  be 
conveyed  to  the  purchaser  or  assignee.  (Art.  9.) 

Marking  Goods :    "Marca  Registrada"  or  "M.  R." 

Penalties. 

Fines  ranging  from  $20  to  $500,  and  imprisonment  from  fif- 
teen days  to  one  year,  shall  be  imposed  on  the  following: 


40O  PERU 

1.  Those   who  counterfeit  or  in  any  manner   alter  a   trade 
mark. 

2.  Those  who  affix  upon  their  products  or  articles  of  com- 
merce the  trade  mark  of  some  other  person. 

3.  Those  who  knowingly  sell,  offer  for  sale,  consent  to  sell, 
or  circulate  articles  on  which  a  counterfeited  or  fraudulent  trade 
mark  has  been  affixed. 

4.  Those  who  knowingly  sell,  offer  for  sale,  or  consent  to 
sell,   counterfeited   trade   marks,   and   those   who  sell   authentic 
marks  without  the  knowledge  of  their  owner. 

5.  All  those  who,  with  fraudulent  intention,  affix  or  cause 
others  to  affix,  upon  merchandise  a  title  or  any  other  false  desig- 
nation relating  either  to  its  nature,  quality,  quantity,  number, 
weight  or  measure,  or  the  time  or  country  in  which  it  has  been 
manufactured  or  shipped. 

6.  Those  who  knowingly  sell,  offer  for  sale,  or  consent  to 
sell,  merchandise  bearing  the  false  titles  and  designations  spoken 
of  in  the  preceding  paragraph. 

In  cases  of  second  offense  the  penalty  shall  be  doubled. 

The  Sale  of  Proprietary  Remedies. 

The  law  of  December,  1909,  requires  that  all  proprietary 
remedies  shall  have  the  authorization  of  the  National  Depart- 
ment of  Health  as  a  condition  of  their  sale  in  the  Republic  and 
that  they  shall  have  the  formula  plainly  printed  upon  the  labels, 
which  shall  disclose  the  quantity  of  the  active  substances  con- 
tained therein.  Upon  compliance  with  the  required  formalities 
of  the  Department  of  Health,  it  is  provided  that  authorization 
for  the  sale  of  the  medicines  will  be  granted.  The  procedure, 
however,  for  obtaining  such  authorization  does  not  appear  from 
the  regulations.  After  December,  1909,  no  medicine,  authority 
for  the  sale  of  which  has  not  been  previously  obtained  from 
the  National  Department  of  Health,  will  be  permitted  to  be  in- 
troduced through  the  customs  houses  of  the  country.  (Bulletin 
of  the  Int.  Bureau  of  Am.  Reps.,  August,  1909,  p.  468.) 


PERU 

This  Republic  is  bounded  on  the  north  by  Ecuador,  on  the 
south  by  Chile  and  Bolivia,  and  on  the  east  by  Brazil.  The 
coast  line  extends  to  about  1,500  miles  and  the  area  was  esti- 
mated at  upwards  of  500,000  square  miles.  Its  population 
according  to  an  estimate  census  in  1896  amounted  to  4,609,999 
inhabitants,  exclusive  of  about  350,000  Indians. 


PERU  401 

The  mountain  ranges  of  the  Andes  run  from  end  to  end  of 
the  country  at  a  distance  of  about  60  miles  from  the  Pacific 
co'ast.  East  of  this  range  the  country  is  of  great  fertility  and 
produces  an  abundance  of  coffee,  cotton,  sugar,  cocoa,  copaiba, 
India-rubber,  bark,  sarsaparilla  and  probably  the  finest  grapes 
in  the  world.  The  country  is  also  rich  in  minerals,  gold,  silver, 
lead,  quicksilver,  copper,  coal  and  nitrates  existing  in  abundance. 
Salt  deposits  also  exist  in  vast  quantities,  said  to  be  inexhaust- 
ible, being  formed  by  percolation  of  the  sea  water  through  a 
porous  rock.  Very  important  petroleum  beds  in  the  north  de- 
partment of  Piura  have  been  discovered  and  are  worked. 

The  imports  consist  principally  of  coals,  wheat  and  dry  goods. 

MONEY — The  sol=100  centavos=4s.  (nominal  value)=96 
cents  U.  S.;  real  2s.  (about)=48  cents  U.  S. 

WEIGHTS  AND  MEASURES — The  metric  system. 

Laiv. 
December  19,  1892. 

Decrees. 

September  5,  1909,  August  27,  1909,  September  9,  1910,  No- 
vember 10,  1911. 

Term. 

The  right  of  ownership  recognized  by  a  registered  trade 
mark  shall  last  ten  years,  but  this  time  may  be  extended  for 
another  ten  years,  provided  that  application  to  that  effect  is 
made  at  any  time  within  six  months  before  the  expiration  of  the 
first  period,  and  provided  further  that  all  the  requisites  provided 
for  in  the  original  registration  shall  be  again  complied  with. 

Who  May  Apply. 

All  persons  or  industrial  corporations  have  the  right  to  apply 
for  and  obtain  the  official  registration  of  denominations  of 
articles,  or  names  of  persons  written  in  some  particular  form, 
emblems,  monograms,  engravings,  drawings,  seals,  vignettes, 
stamps  in  relief,  letters,  and  numerals  made  or  written  in  some 
special  form,  casks  and  wrappings,  and  in  general  any  kind 
of  sign  or  mark,  by  which  products  of  a  factory,  or  articles  of 
one  class  of  trade,  may  be  distinguished  from  all  others. 

Establishments  or  companies,  native  or  foreign,  which  make 
application  for  the  registration  of  trade  marks  should  furnish 
evidence  of  their  existence  by  subjoining  to  the  respective  appli- 
cation a  document  which  proves  it,  the  former  their  registration 
in  the  mercantile  register,  and  the  latter  their  legal  constitution 
in  the  country  in  which  they  are  established.  (Decree  of  Sept. 
9,  1910.) 

26 


402  PERU 

Registration  by  Third  Parties. 

The  Decree  of  Nov.  10,  1911,  prevents  and  suppresses  the 
abuse  of  registration  by  third  parties.  The  Decree  reads  as 
follows : 

WHEREAS,  the  protection  of  Industrial  Property  has  been 
established  in  a  sufficient  manner,  as  far  as  it  relates  to  the 
registration  of  Marks  of  Manufacture,  thus  reducing  to  a  mini- 
mum the  possible  inscription  of  their  imitations  or  falsifications, 
it  is  necessary  to  protect  likewise  the  Marks  of  Commerce,  the 
registration  of  which  facilitates,  in  reality,  the  inscription  as 
such  of  true  Marks  of  Manufacture,  of  which  they  are  not  the 
legitimate  proprietors,  and 

WHEREAS,  it  is  necessary  to  prevent  and  suppress  this  abuse, 

THEREFORE  BE  IT  DECREED,  that  the  merchants  and  manu- 
facturers or  their  agents  who  in  their  own  name  shall  obtain 
the  registration  of  marks  over  which  they  have  no  dominion, 
shall  lose  the  right  to  register  thereafter  Marks  of  Manufacture 
or  Commerce,  either  directly  or  through  a  third  party ;  that  the 
Department  of  Industries  shall  reject  the  applications  that  are 
found  within  the  provision,  and  that  the  mere  proof  of  interests 
that  they  may  have  in  any  mark,  registered  after  this  date,  shall 
be  sufficient  to  annul  the  registration  of  the  same. 

Given  at  the  Government  House,  in  Lima,  Nov.  10,  1911. 

(Signed)     A.  B.  LEGUIA. 

Marks  Not  Registrable. 

The  following  cannot  be  registered  as  trade  marks : 

1.  Letters,  words,  names,  or  marks  used,  or  to  be  used,  by 
the  Government  only.     Geographical   names  are  by  themselves 
unregistrable. 

2.  The  form  or  shape  given  to  the  article  by  its  manufac- 
turer. 

3.  The  color  of  the  article. 

4.  Terms  or  expressions  in  general  use. 

5.  Designations  usually  employed  to  indicate  the  nature  of 
the  articles  or  the  class  to  which  they  belong. 

6.  Immoral  drawings  or  expressions. 

Priority. 

The  priority  or  preference  of  the  right  of  ownership  of  a 
trade  mark  shall  be  governed  by  the  date  of  the  application  for 
its  registration. 

Documents  Required. 

Power  of  attorney  in  Spanish,  attested  by  a  Notary  Public, 
and  legalized  by  a  Peruvian  Consul;  a  clear  description  of  the 


PERU  403 

mark,  so  that  the  translation  shall  agree  with  the  English  de- 
scription, and  in  the  case  of  renewals,  an  exact  copy  of  the 
original  description;  eight  copies  of  the  mark.  (Forms  for 
application  may  be  obtained  from  B.  Singer's  Offices.) 

Mode  of  Application. 

To  secure  the  ownership  of  a  trade  mark  the  following  is 
required : 

1.  To  file  an  application  for  that  purpose  in  the  Department 
of  the  Treasury  and  Commerce,  said  application  to  be  accom- 
panied by  two  copies  of  the  mark  the  registration  of  which  is 
desired.  '    *j-^l 

2.  To  file,  also  in  duplicate,  a  description  of  the  mark  when 
consisting  of  a  figure  or  emblem. 

3.  To  indicate  the  class  of  articles  on  which  the  mark  is  to 
be  placed  or  affixed  and  explain  whether  the  placing  or  affixing 
of  the  mark  is  to  identify  the  products  of  some  particular  factory 
or  to  differentiate  from'  all  others  a  particular  class  of  articles 
of  commerce. 

4.  To  prove  by  means  of  a  receipt  from  the  General  Treasury 
that  the  registration  fees  have  been  paid. 

5.  To  exhibit  the  power  of  attorney  of  the  manufacturer  or 
merchant  who  wishes  to  secure  the  ownership  of  the  trade  mark, 
if  the  attorney  appears  in  his  name. 

The  Industrial  Division  of  the  Department  of  the  Treasury 
and  Commerce  shall  keep  a  register  of  foreign  trade  marks,  and 
another  or  domestic  ones.  The  entries  shall  set  forth  succinctly 
the  claims  of  the  applicants,  and  the  day  and  hour  on  which  the 
applications  are  filed.  Each  entry  shall  be  signed  by  the  head  of 
the  office,  the  secretary  or  clerk  in  charge  of  the  matter,  and  the 
applicant  himself.  The  applicant  shall  be  provided,  at  no  other 
expense  than  the  cost  of  the  stamped  paper,  writh  a  copy  of  the 
entry.  The  registration  books  shall  be  paginated,  and  the  initials 
or  signature  of  the  Secretary  of  the  Treasury  shall  be  affixed  to 
each  one  of  their  folios. 

The  trade-marks  shall  be  properly  classified  and  preserved  in 
the  archives  of  the  registration  office.  The  originals  shall  be 
produced  in  court  in  case  of  litigation.  The  public  shall  be 
permitted  to  examine  them  at  the  office. 

The  duplicates  of  descriptions  and  drawings  filed  with  the 
applications  shall  be  attached  to  the  certificates  of  ownership  of 
the  trade  mark  issued  by  the  registration  office.  Said  certifi- 
cates shall  be  signed  and  sealed  by  the  head  of  the  office,  in  the 
name  of  the  nation,  by  authority  of  the  Government. 

Reconsideration  of  orders  refusing  the  registration  of  a  trade 
mark  may  be  applied  for  within  the  period  of  thirty  days 
subsequent  to  the  date  of  the  order.  Applications  to  that  effect 


404  PERU 

shall  be  made  to  the  Secretary  of  the  Treasury  and  Commerce, 
who,  before  rendering  his  decision,  shall  hear  the  opinion  of 
the  Government  Attorney  before  the  Supreme  Court. 

Protests  by  interested  parties  against  injuries  sustained  by 
them  in  these  matters  shall  be  entered  within  the  period  of  one 
year. 

Fees. 

The  fees  to  be  paid  by  the  interested  parties  or  their  repre- 
sentatives shall  be  as  follows: 

For  the  registration  of  a  foreign  trade  mark  or  name  100 
silver  sols. 

For  the  registration  of  a  transfer  and  the  certificate  thereof, 
50  sols. 

For  the  first  certificate  of  registration,  40  sols ;  for  each  extra 
copy  of  the  same,  20  sols. 

Assignment. 

The  ownership  of  trade  marks  passes  to  the  heirs,  and  is 
transferable  by  contract  or  testamentary  disposition. 

It  is  to  be  understood  that  the  sale  or  transfer  of  the  factory 
or  establishment  which  owns  and  uses  a  trade  mark  carries  with 
it,  if  nothing  is  provided  to  the  contrary,  the  transfer  of  owner- 
ship of  'the  mark  itself. 

Transfers  shall  be  recorded  at  the  office  where  the  marks  are 
registered. 

Fraudulent  Appropriation. 

Decree  of  July  12,  1912. 

Where  foreigners  not  residing  in  Peru  fail  to  register  their 
trade  marks,  according  to  Article  9  of  the  Law  of  December  19, 
1892,  foreign  merchants  residing  in  Peru  often  take  advantage 
of  this  omission  and  register  the  trade  marks  in  their  own  name. 

If  Article  9  of  the  law  accords  priority  to  the  first  applicant, 
the  intention  of  the  law  has  not  been  to  favor  this  first  applicant 
against  the  real  foreign  owner  and  user  of  the  mark. 

Taking  into  consideration  the  financial  interest  of  Peru,  and  in 
order  not  to  make  the  mistake  of  protecting  marks  which  the 
law  does  not  have  to  protect,  because  they  have  not  been  registered 
in  Peru  by  the  real  proprietors,  and  by  this  fact,  to  annul  in 
practice  the  very  institution  of  filing  of  marks,  which  is  necessary 
to  protect  the  property, 

Be  it  resolved : 

ARTICLE  1.  In  the  case  of  opposition  to  a  trade  mark  based 
on  the  similarity  with  another  mark  not  registered,  but  known  to 
the  market  (Peruvian),  the  opponent  is  required  to  accompany  his 
act  of  opposition  with  an  authentic  facsimile  of  the  mark  to  which 


PERU  405 

it  refers,  and  with  a  certificate  proving  the  deposit  in  the  fiscal 
treasury  of  two  Peruvian  pounds,  and  five  soles,  which  will  serve 
to  effect  the  registration  for  him  of  the  authentic  mark  in  the 
ninety  days  starting  from  the  demand  of  the  opposition. 

ART.  2.  If  in  the  delay  of  ninety  days  to  which  the  preceding 
article  refers,  the  regular  registration  has  not  been  applied  for  in 
due  form  and  in  conformity  with  Articles  4  and  10  of  the  Decrees 
of  July  9th  and  September  10th,  1909,  the  opponent  will  lose  the 
right  to  the  sum  deposited,  and  the  application  against  which  he 
has  made  opposition  will  be  carried  out. 

ART.  3.  If  the  opponent  obtains  the  registration  of  his  mark, 
the  first  applicant  will  lose  (by  right  of  fine)  the  amount  of  fees 
which  he  has  lodged,  and  he  will  be  prohibited,  moreover,  for 
the  future,  from  presenting  new  applications  for  registration  in 
conformity  with  the  Decree  of  Nov.  10th,  1911. 

Designation  of  Consuls  Authorized  to  Receive  Applications  for 

Registration. 

Lima,  August  27,  1909. 

Taking  into  consideration : 

That  it  is  necessary  to  designate  the  Consuls  of  the  Republic 
who  are  authorized  to  receive  applications  for  registration  of 
trade  marks,  in  accordance  with  the  decree  of  even  date ; 

It  is  resolved,  to  designate,  in  order  to  establish  this  service, 
the  Consuls  of  the  Republic  in  London,  Liverpool,  Glasgow, 
Hamburg,  Antwerp,  Paris,  Havre,  Barcelona,  Geneva,  New 
York  and  Buenos  Aires,  to  whom  the  Department  of  Fomento 
shall  transmit  instructions  for  the  better  execution  of  the  said 
decree. 

Record  this,  communicate  it,  and  publish  it. 

Signature  of  His  Excellency. 

(Signed)     D.  MATTO. 

Lima,  September  10,  1909. 

Taking  into  consideration : 

That  the  Consulate  of  the  Republic  in  Bremen,  Germany,  by 
reason  of  the  industrial  importance  of  the  zone  which  it  serves 
and  that  of  the  port  in  which  it  is  established,  may  be  equipped 
for  the  service  referred  to  in  the  decree  of  August  27th  last, 
relative  to  the  registration  of  trade  marks : 

It  has  been  resolved,  to  appoint  the  Consulate  of  the  Republic 
in  Bremen  for  the  purpose  of  executing  the  above  mentioned 
decree  of  August  27th  last. 

Record  this,  communicate  it,  and  publish  it. 

Signature  of  His  Excellency. 

(Signed)     D.  MATTO. 

The  filing  of  applications  through  consular  offices  is  unsatis- 
factory ;  it  delays  the  registration  in  an  unnecessary  manner. 


406  PERU 

Law  in  Force  in  Peru  to  Prevent  the  Sale  or  Importation  of 
Goods  Bearing  a  False  Indication  of  Origin. 

There  are  no  laws  to  prevent  the  sale  or  importation  of  goods 
whose  country  of  origin  may  have  been  falsely  indicated.  Con- 
sular invoices  showing  country  of  origin  are  required  for  all 
imported  goods.  There  is  no  obligation  to  mark  imported  goods 
with  an  indication  of  their  place  of  origin. 

Marking  Goods:  "Marca  Registrada"  or  "M.  R." 

Penalties. 

ART.  23.  Infringements  of  trade  marks  shall  be  punished 
with  fines  ranging  from  25  to  500  sols,  or  with  imprisonment 
from  forty  days  to  six  months.  The  following  shall  be  guilty 
of  infringement: 

First.  Those  who  counterfeit  or  in  any  way  adulterate  trade 
marks. 

Second.  Those  who  affix,  upon  articles  or  their  own  fabrica- 
tion, trade  marks  belonging  to  others. 

Third.  Those  who  knowingly  sell,  offer  for  sale,  accept  the 
sale,  or  consent  to  the  sale  or  circulation  of  articles  stamped 
with  counterfeited  marks,  or  with  marks  fraudulently  used. 

Fourth.  Those  who  knowingly  sell,  offer  for  sale,  or  accept 
the  sale  of  counterfeited  trade  marks,  and  even  authentic  ones, 
when  done  without  the  consent  of  their  lawful  owners. 

Fifth.  Those  who,  with  fraudulent  intention,  mark  or  cause 
others  to  mark  their  own  articles  with  false  titles,  or  designa- 
tions, respecting  their  nature,  quality,  quantity,  number,  weight, 
measure,  or  the  name  of  the  country  of  origin. 

Sixth.  Those  who  knowingly  sell,  offer  for  sale,  or  accept  the 
sale  of  articles  bearing  the  false  statements  to  which  reference 
is  made  in  the  foregoing  paragraph. 

ART.  24.  In  cases  of  second  offense  the  penalty  shall  be 
doubled. 

ART.  25.  The  infringement  or  usurpation  shall  be  deemed 
consummated,  even  if  the  counterfeited  mark  is  affixed  only  to 
one  article. 

ART.  26.  Those  who  have  sold,  or  keep  for  sale,  articles 
bearing  counterfeited  marks,  thereby  infringing  or  usurping 
legitimate  rights  shall  be  bound  to  inform  the  lawful  owner  of 
the  mark  of  the  name  and  address  of  the  person  or  persons 
from  whom  they  bought  the  articles,  or  who  offered  to  them  the 
sale  of  the  same,  and  the  dates  on  which  the  negotiations  for 
this  purpose  began.  Those  refusing  to  furnish  this  information 
may  be  judicially  compelled  to  give  it,  under  penalty  of  being 
taken  and  dealt  with  as  accomplices. 

ART.  27.  All  articles  bearing  counterfeited  or  fraudulent 
marks  found  in  the  possession  of  the  infringer  or  his  agents 


PERU  x 407 

shall  be  confiscated  and  sold.  The  proceeds  of  the  sale  shall 
be  applied  to  the  payment  of  the  costs  and  of  the  indemnity 
established  by  law.  The  balance,  if  any,  shall  go  to  the  schools 
of  the  province  where  the  confiscation  was  made. 

ART.  28.  All  counterfeited  marks  found  in  the  possession  of 
the  infringer  and  all  instruments  and  tools  used  for  the  counter- 
feiting shall  be  destroyed. 

ART.  29.  The  right  to  criminally  prosecute  the  infringers  be- 
longs exclusively  to  the  injured  party,  but  after  the  proceedings 
have  been  started  the  Attorney  for  the  Government  shall  join 
in  them.  The  complainant  shall  have  the  right,  however,  at 
any  time  before  the  rendering  of  the  decision,  of  withdrawing 
his  complaint  and  thus  ending  the  case. 

ART.  30.  Persons  injured  by  the  infringement  shall  have  the 
right  to  sue  the  infringers  and  their  accomplices  for  damages. 
The  decisions  shall  be  published  at  the  expense  of  the  party 
against  which  they,  were  rendered.  The  action  expires  by  limi- 
tation three  years  after  the  infringement,  and  one  year  after  the 
owner  of  the  trade  mark  became  aware  of  it. 

ART.  31.  Cases  of  usurpation  of  name  shall  be  governed  by 
the  same  .rules  as  the  cases  of  infringements  of  trade  marks. 

Pure  Food  and  Drug  Legislation. 

In  Peru  the  faculty  of  medicine,  which  is  vested  with  power 
to  legislate  in  this  behalf,  has  lately  issued  a  decree  providing 
for  an  examination  by  a  Pharmacy  Commission  of  all  prepara- 
tions of  a  proprietary  nature.  These  must  be  submitted,  to- 
gether with  the  formula,  for  the  purposes  of  such  examination 
and  analysis.  The  finding  of  the  Commission  is  given  in  the 
shape  of  a  certificate,  having  obtained  which,  the  owner  may 
then  advertise  and  promote  the  sale  of  the  preparations  through- 
out the  Republic.  The  decree,  we  are  advised,  applies  only  at 
present  to  those  proprietary  preparations  that  have  not  already 
been  introduced  to  the  public,  or  already  invoiced  to  some  pur- 
chaser there.  The  measure  is  said  to  be  directed  against  a  great 
number  of  spurious  preparations  of  worthless  character  that  have 
found  their  way  upon  the  market  in  Peru  from  local  sources, 
and  to  have  really  originated  from  the  pure  food  legislation  of 
the  United  States,  which  received  much  favorable  comment  in 
the  Peruvian  newspapers  at  the  time  of  its  passage. 

Trade  Mark  Regulations. 

Some  important  modifications  of  the  regulations  for  the  regis- 
tration of  trade  marks  under  the  present  statute  of  Peru,  have 
been  enacted.  These  regulations  provide,  first,  that  where  appli- 
cation is  made  for  the  registration  of  names,  commercial  names, 
portraits,  or  fascimile  signatures  which  are  not  those  of  the 


408  PERU 

applicant,  registration  shall  be  withheld  until  the  person  interested 
shall  show  the  proper  authorization  of  the  owners  thereof,  or  of 
their  heirs,  to  the  use  of  the  name,  commercial  name,  portrait 
or  facsimile  signature. 

Geographical  names,  as  such,  are  not  open  to  registration,  but 
where  application  is  made  for  the  registration  of  the  names  of 
farms  or  localities  of  private  ownership,  the  interested  party, 
by  showing  the  authority  of  the  owner  or  owners  thereof,  may 
be  permitted  to  register.  From  this  it  follows,  of  course,  that 
the  names  of  localities  or  farms  privately  owned  may  be  regis- 
tered by  the  owners  thereof  upon  proof  of  such  ownership. 

The  Government  has  now  modified  the  existing  regulations 
by  providing  for  the  classification  of  goods  for  purposes  of 
registration,  adopting  eighty  classes  as  the  basis  of  trade  mark 
registrations,  said  to  be  identical  with  the  classification  of  the 
Argentine  Republic.  It  is  required  that  registration  be  here- 
after made  by  classes,  although  it  does  not  appear  that  there  is 
any  restriction  upon  the  number  of  classes  that  may  be  covered 
by  one  registration. 

Further  modification  of  the  regulations  reduces  the  time  for 
publishing  applications  from  twenty  to  ten  days,  requires  the 
furnishing  of  an  electrotype  for  reproducing  the  representation 
of  the  mark  in  connection  with  the  publication,  and  provides 
for  the  monthly  publication  of  a  list  of  trade-marks  registered, 
with  the  representations  thereof  and  a  statement  of  the  goods 
to  which  they  are  applied. 

DECISIONS. 
Opposition  to  Trade  Mark  Registration. 

Upon  an  application  to  register  a  trade  mark  by  Alfred  Bird 
&  Sons,  Ltd.,  consisting  of  the  name  "Bird's,"  opposition  was 
made  by  the  firm  of  Weiss  &  Co.,  of  Lima,  Peru,  who  claimed 
that  they  were  the  importers  of  similar  goods  made  by  Johnson, 
Baird  &  Co.,  and  that  their  rights  would  be  prejudiced  by  the 
.registration,  by  reason,  presumably  of  some  alleged  similarity  of 
their  mark  to  that  sought  to  be  registered.  In  view,  however, 
of  the  fact  that  Weiss  &  Co.  had  registered  no  trade  mark,  it 
was  held  that  they  had  no  right  to  invoke  the  protection  of  the 
law,  accorded  to  owners  of  registered  marks.  The  opposition 
was  rejected  and  the  application  granted. 


A  number  of  decrees  in  cases  of  trade  mark  infringement 
have  been  granted  in  Peru.  One  of  these  has  to  do  with  a  case 
wherein  an  infringer  had  been  fined  $500.00  for  his  failure  to 
comply  with  the  provisions  of  the  decree  requiring  him  to  with- 


PERU  409 

draw  the  infringing  goods  from  the  market.  The  latest  decree 
was  in  response  to  a  petition  for  an  additional  thirty  days  within 
which  to  retire  the  goods,  the  petition  alleging  that  the  goods 
by  reason  of  the  shipment  of  which  the  fine  had  been  previously 
imposed  were  actually  shipped  within  the  period  of  seventy  days 
originally  allowed.  The  decree  points  out  that  this  period  of 
seventy  days  was  not  allowed  in  order  that  the  infringer  might 
use  the  infringing  mark  during  that  period,  but  that  he  might, 
within  that  period,  cease  from  using  it  and  there  was  no  reason 
for  abating  the  fine  imposed  upon  him.  However,  a  further 
extension  of  thirty  days  within  which  to  retire  the  goods  was 
granted. 

The  Nugget  Polish  Co.,  Ltd.,  of  London,  manufacturers  of 
shoe  polish,  figured  in  several  interesting  proceedings  for  the 
protection  of  their  trade  mark.  In  the  first,  they  complained  of 
the  presence  in  the  customs  house  of  Callao  of  several  thousand 
tin- boxes  intended  to  contain  shoe  blacking,  and  which  bore  their 
"Nugget"  trade  mark,  and  the  descriptive  matter  used  therewith 
upon  their  boxes.  The  situation  was  complicated  by  the  fact 
that  one  Portal  had  registered  the  word  "Nugget"  for  shoe 
blacking,  and  that  the  Nugget  Polish  Co.,  in  attempting  to 
register  the  label  that  anneared  upon  the  top  of  their  boxes,  had 
been  obliged  to  omit  this  word  and  register  only  the  remainder 
of  their  label.  The  result  of  the  complaint  made  was  a  decree, 
finding  that  the  boxes  were  infringements  upon  the  right  of 
Portal  and  of  the  Nugget  Polish  Co.,  and  that  no  one  had  the 
right  to  sell  blacking  in  those  boxes,  within  the  territory  of  the 
Republic.  Upon  a  subsequent  application  by  the  Company  for 
an  order  to  prevent  the  shipment  of  the  boxes  from  the  customs 
house,  it  was  said  that  the  Government  had  no  authority  to  make 
such  an  order,  which  was  at  any  rate,  quite  unnecessary,  in  view 
of  the  fact  that  the  boxes  were  imported  and  that  the  previous 
decree  guaranteed  the  parties  interested  against  any  improper 
use  thereof. 

The  last  development  in  connection  with  this  mark  apparently 
arose  from  the  fact  that  Portal  was  instituting  prosecutions 
against  the  customers  of  the  Nugget  Polish  Co.  for  sale  of  the 
"Nugget"  goods.  It  was  held  that  the  word  "Nugget"  having 
been  duly  registered  to  Portal,  there  was  no  ground  for  prevent- 
ing him  from  enforcing  his  rights  in  the  mark ;  that  in  the  ulti- 
mate analysis,  the  Nugget  Co.,  in  opposing  him,  was  now  asking 
for  a  reversal  of  the  first  decree,  which  had  declared  that  no  one 
had  the  right  to  use  in  the  Republic  marks  which  infringed  upon 
the  rights  of  Portal,  or  the  Nugget  Company. 

Another  decree  had  to  do  with  the  right  to  register  the  trade 
mark  "Sol"  (Sun)  accompanied  by  the  figure  of  a  star,  the 
registration  being  opposed  bv  the  registrant  of  another  mark, 
'La  Estrella"  (The  Star)  likewise  accompanied  by  the  figure 


4io  PERU 

of  a  star.  It  was  held  that  the  marks  were  clearly  susceptible 
of  being  confused,  and  that  the  mark  last  applied  for  should  not 
be  registered.  The  decree  went  even  further,  forbade  the  appli- 
cant to  continue  in  the  use  of  the  mark,  called  attention  to  the 
fact  that  this  was  the  second  time  that  he  had  applied  to  register 
it  with  slight  variations,  and  required  him  within  thirty  days  to 
withdraw  from  the  market  goods  bearing  these  marks. 


Upon  examination  of  the  application  of  Mr.  Frederico  E. 
Remy,  in  which  he  petitions  that  the  representative  of  the 
National  Water  Company,  of  Waukesha,  Wisconsin,  be  notified 
to  refrain  from  using  the  mark,  the  label  of  which  is  attached  on 
mineral  waters  which  the  said  company  imports  into  Peru,  and 
it  appearing  from  the  particulars  gathered: 

1st.  That  in  September  of  190G  Remy  presented  himself,  ap- 
plying for  the  registration  of  the  mark  White  Rock,  with  a  label 
on  which  appeared  the  words  "Apollinaris  Ch.  Co.,  L.  P." ; 

2nd.  That  in  the  October  following  Mr.  F.  W.  Bayly  also 
presented  himself  as  attorney  for  the  Apollinaris  Company,  pro- 
testing against  the  use  which  Remy  attempted  to  make,  on  a 
single  article,  of  the  duly  registered  name  of  this  company,  be- 
longing to  a  spring  and  applicable  only  to  the  water  emanating 
therefrom,  not  being,  therefore,  in  general  use  or  generic. 

3rd.  That  due  to  this  opposition,  after  having  presented  an 
argument  tending  to  show  that  the  protest  of  Bayly  was  not  well 
founded,  he  substituted  on  his  label  these  words  for  those  which 
gave  rise  to  the  opposition:  "Trade  Mark  Registered.  The  White 
Rock  Company,  Natural  Mineral  Water." ; 

4th.  That  Remy,  when  inscribing  on  his  label  the  name  The 
White  Rock  Company,  did  not  present  a  power  of  attorney  from 
the  company  of  this  name,  as  he  ought  to  have  done  in  order 
to  act  for  it; 

5th.  That  Remy  expressly  requested  that  the  registration  of 
the  mark  should  be  made  under  the  name  "White  Rock,"  written 
on  the  label,  which  he  presented  in  diminutive  characters,  hardly 
perceptible,  and  not  under  the  name  "Tikla,"  which  was  placed 
in  large  red  characters  across  the  said  label ; 

6th.  That  the  label  used  by  the  National  Water  Co.  of  Wis- 
consin, U.  S.  A.,  and  presented  by  Remy,  and  that  registered  by 
him  are  so  similar  as  to  be  almost  facsimiles. 

7th.  That  the  mark  White  Rock,  composed  only  of  these 
words,  has  been  registered  in  favor  of  the  American  company 
since  November,  1907.  And  taking  into  consideration: 

1st.  That  it  is  a  well  known  fact  that  neither  today,  nor  when 
Remy  anplied  for  the  registration  of  his  mark,  with  the  denomi- 
nation The  White  Rock  Company,  did  there  exist  in  Peru  any 
company  of  this  name ; 


PERU  411 

2nd.  That  in  this  sense  Remy  has,  unlawfully,  made  use  of 
the  name  of  a  company  which  does  not  exist,  with  prejudice  to 
the  foreign  company  which  prepares  and  ships  its  waters  with 
the  mark  White  Rock ; 

3rd.  That  by  the  similarity  of  the  labels  used  by  Remy  and 
by  the  American  Company  is  shown,  in  one  of  them,  the  desire 
to  imitate  the  other,  an  imitation  which  surely  has  not  been 
accomplished  by  The  National  White  Rock,  a  company  incor- 
porated since  1906,  according  to  the  laws  of  the  State  of  Wis- 
consin, U.  S.  A.,  after  succeeding  The  White  Rock  Mineral 
Spring  Company  in  its  rights,  as  is  disclosed  by  the  power  of 
attorney  in  the  case,  executed  before  the  proper  notary,  certified 
by  the  Secretary  of  the  City  of  New  York  and  legalized  by  the 
Consul  of  Peru  in  the  same  city. 

It  is  resolved: 

1st.  That  there  is  no  ground  for  the  application  of  Mr. 
Federico  E.  Remy,  The  National  Water  Company  being,  there- 
fore, at  liberty  to  use  the  mark  White  Rock  to  which  this  pro- 
ceeding refers,  and  to  register  it  if  it  thinks  proper. 

2nd.  Annul  the  registration  of  the  mark  White  Rock  which, 
on  the  25th  of  January,  1907,  was  effected  in  favor  of  Mr. 
Federico  E.  Remy;  and 

3rd.  Grant  to  the  said  Remy,  for  the  sake  of  equity,  the  term 
of  six  months  to  withdraw  from  the  market  the  mineral  waters 
which  he  manufactures  and  sells  with  a  label  similar  to  that  of 
The  National  Water  Company ;  it  being  understood  that  said 
term  having  expired  without  his  having  complied  with  this  reso- 
lution, he  shall  be  considered  to  have  incurred  the  penalties  named 
in  Art.  23  of  law. 

Record  this  and  publish  it. 

Signature  of  His  Excellency.  0 

ALAYZA  PAZ  SOLDAN. 


Having  examined  the  petition  of  Ludowieg  &  Co.,  merchants 
of  Lima,  in  which  they  ask  that  the  penalties  named  in  Art.  23 
of  the  law  of  December  19,  1892,  be  inflicted  upon  J.  A.  Estre- 
madoyro,  prop.,  of  the  pharmacy  located  in  Melchormalo  St.,  144, 
and  upon  Mariano  Hermoza,  domiciled  in  Delecalzas  St.,  124, 
also  of  Lima,  for  the  infringement,  which  thev  have  discovered 
and  complain  against,  of  the  Florida  water  of  Murray  and  Lan- 
man,  the  trade  mark  for  which  they  had  registered  in  the  name 
of  Lanman  and  Kemp,  of  New  York,  as  their  attorneys : 

Having  examined  also  the  authentic  copies  of  the  declarations 
made  by  the  defendants  in  the  police  office,  from  which  it  appears 
that  Hermoza  has  confessed  that  he  manufactured  the  product 
denounced  as  an  infringement  and  sold  it  to  Estremadoyro,  who 
in  his  turn  declared  that  he  bought  it  from  the  former  for  the 
purpose  of  putting  it  before  the  public : 


412  PHILIPPINE  ISLANDS 

And  taking  into  consideration : 

1st.  That  to  consummate  the  fraud  the  accused  have  made 
use  of  the  genuine  wrappers,  labels,  and  circulars  in  that  they 
have  imitated  the  genuine  ones  and  forged  the  firm  name  of  the 
proprietors  of  the  mark; 

2nd.  That  the  Florida  water  mark  which  is  used  by  Lanman 
&  Kemp  of  New  York,  was  registered  in  July  1894,  and  the 
registration  renewed  in  August  of  1904 ;  this  firm  being,  there- 
fore, in  possession  of  the  right  accorded  by  the  said  law  of  De- 
cember 19,  1892;  a  right  which  the  Government  recognized  and 
was  obliged  to  protect  by  issuing  a  certificate  of  property  in  the 
said  mark; 

3rd.  That  the  acts  committed  by  Hermoza  and  Estremadoyro 
and  of  which  complaint  is  made  by  Ludowieg  &  Co.,  are  provided 
for  in  paragraphs  1  and  3  of  Art.  23  of  the  law  on  the  subject 
and  constitute  the  offense  of  falsification  of  a  registered  mark. 

4th.  That  the  defendants  have  no  right  to  profit  by  damaging 
the  interests  of  the  proprietors  of  the  genuine  Florida  water 
mark,  by  selling,  under  cover  of  same,  a  product  which  is  not 
genuine;  nor  to  place  on  sale  an  article  which  is  not  what  the 
consumer  wishes  to  obtain ; 

It  is  resolved : 

In  accordance  with  Article  23  of  the  law  on  trade  marks  to 
impose  upon  each  one  of  the  defendants.  Mr.  Mariano  Her- 
moza and  Mr.  J.  A.  Estremadoyro,  a  fine  of  one  hundred  pounds 
Peruvian  gold,  with  the  notification  that  they  should  withdraw 
at  once  from  circulating  the  products  which  they  have  in  their 
possession,  bearing  the  imitated  mark,  and  that  in  case  of  a 
repetition,  this  punishment  will  be  doubled  in  accordance  with 
Art.  24,  and  that  what  is  prescribed  in  Articles  27  and  28  of  the 
same  law. 

Record  this,  transmit  a  copy  to  the  Prefecture  of  Lima,  order- 
ing it  to  collect  the  fines  imposed,  and  publish  it. 

(Signed)     MATTO. 

(El  Comercio,  Lima,  June  29,  1909.) 


PHILIPPINE  ISLANDS 

The  Philippine  Islands  are  a  group  situated  in  the  northern 
portion  of  the  East  Indian  Archipelago.  They  comprise  up- 
wards of  2,000  islands  and  contain  an  area  of  140,000  square 
miles  with  a  population  estimated  at  7,638,500.  Two  of  the 
islands,  Luzon  in  the  north  of  the  group  and  Mindanao  in  the 
south,  are  by  far  the  largest.  The  general  system  of  intercom- 
munication between  the  numerous  islands  of  the  Philippines  is 
maintained  by  local  steamers  under  Government  supervision. 


PHILIPPINE  ISLANDS  413 

The  principal  port  and  city  is  Manila  in  the  island  of  Luzon; 
the  other  ports  open  for  trade  here  are  Yloilo,  in  the  island  of 
Pariay,  and  Cebu. 

The  imports  consist  principally  of  cotton  goods,  rice,  iron  and 
steel. 

MONEY— 1  dollar  (100  cents)  =to  4s.  2  d.=100  cents  U.  S. 

WEIGHTS  AND  MEASURES — Metric  system. 

Laws. 

Rules  issued  pursuant  to  Sec.  19  of  Act  No.  666,  passed  March 
6,  1903,  governing  the  registration  of  trade  marks  and  trade 
names,  for  the  execution  of  said  Act. 

Amendments  Nos.  744  and  803. 

Duration. 

A  certificate  of  registry  shall  remain  in  fofce  for  thirty  years 
from  its  date,  except  in  cases  where  the  trade  mark  is  claimed 
for,  and  applied  to,  articles  not  manufactured  in  this  country, 
and  in  which  it  receives  protection  under  the  laws  of  a  foreign 
country  for  a  shorter  period,  in  which  case  it  shall  cease  to  have 
any  force  in  this  country  by  virtue  of  this  Act  at  the  time  that 
such  trade  mark  ceases  to  be  exclusive  property  elsewhere.  At 
any  time  during  the  six  months  prior  to  the  expiration  of  the 
term  of  thirty  years,  such  registration  may  be  renewed  on  the 
same  terms  and  for  a  like  period. 

Reneival. 

Upon  the  expiration  of  the  term  of  thirty  years  the  trade  mark 
shall  be  considered  cancelled  ipso  facto,  unless  application  be 
made  for  its  renewal  prior  to  the  expiration  of  said  time.  Pro- 
vided, however,  that  in  the  event  of  such  renewal  not  being 
requested,  because  of  the  said  trade  mark  being  no  longer  used, 
it  shall  be  considered  abandoned  and  shall  become  public  property 
so  that  any  person  may  make  application  for  its  use. 

What  Is  a  Trade  Mark. 

A  trade  mark  is  a  name,  emblem,  sign,  or  device  employed  by 
any  person,  firm  or  corporation,  to  designate  the  goods  dealt  in 
or  manufactured  by  such  person,  firm  or  corporation,  for  the 
purpose  of  enabling  the  public  to  recognize  such  goods  and 
manufacture,  and  to  distinguish  them  from  the  goods  and  manu- 
factures of  others. 

Marks  Not  Reglstrable. 

National  arms,  escutcheons,  blazons  or  emblems  of  foreign 
States  or  Nations  will  not  be  admitted  as  trade  marks  without 
the  express  consent  of  the  Governments  concerned ;  neither  will 


414  PHILIPPINE  ISLANDS 

the  portrait  of  any  living  person,  without  his  consent,  or  of  a 
deceased  person,  without  the  consent  of  his  heirs,  be  admitted: 
Provided,  however,  that  portraits  of  heads  of  States  and  of 
famous  men  shall  be  considered  as  exempt  from  this  provision. 

W ho  May  Apply. 

Anyone  who  produces  or  deals  in  merchandise  of  any  kind  by 
actual  use  thereof  in  trade  may  appropriate  to  his  exclusive  use 
a  trade  mark,  not  so  appropriated  by  another,  to  designate  the 
origin  or  ownership  thereof ;  Provided,  that  a  designation  or  part 
of  a  designation  which  relates  only  to  the  name,  quality,  or 
description  of  the  merchandise  or  geographical  place  of  its  pro- 
duction or  origin,  can  not  be  the  subject  of  a  trade  mark. 

Mode  of  Application  and  Procedure. 

Any  person,  firm  or  corporation  desiring  to  register  a  trade 
mark  or  trade  name  for  his  or  its  exclusive  use,  shall  make 
application  therefor,  in  writing,  to  the  Chief  of  the  Division  of 
Archives,  Patents,  Copyrights  and  Trade  Marks,  who  will  note  on 
the  margin  thereof  the  day,  hour  and  minute  when  the  same  was 
filed. 

The  application  shall  be  made  out  in  the  manner  set  forth 
in  Form  No.  1,  and  shall  be  accompanied  by  £yje_copjes  of  the 
trade  mark  to  be  registered  which  shall  be  drawn,  printed,  litho- 
graphed, or  stamped  in  black  or  in  colors  as  actually  used,  to- 
gether with  a  detailed  description,  stating  the  length  of  time 
during  which  the  trade  mark  has  been  used,  or  the  time  when 
the  applicant  wishes  to  begin  using  it,  in  accordance  with  Form 
No.  2,  which  shall  be  signed  in  the  presence  of  two  witnesses; 
and  shall  also  be  accompanied  by  the  affidavit  of  the  applicant 
or  his  attorney  made,  in  accordance  with  Form  No.  3.  before  a 
Notary  Public,  setting  forth  that  he  lias  the  exclusive  right  to 
the  use  of  the  said  trade  mark. 

Said  application,  description  and  affidavit  may  be  made  out  in 
English  or  Spanish. 

Applications,  descriptions,  affidavits  or  copies  of  trade  marks 
containing  amendments  or  erasures  will  not  be  admitted. 

The  size  of  the  paper  to  be  used  for  the  above  shall  be  8  inches 
wide  by  13  inches  long. 

Upon  the  receipt  of  the  application  and  accompanying  papers 
the  Chief  of  the  Division  of  Archives,  Patents,  Copyrights  and 
Trade  Marks  will  issue  the  proper  receipt  to  the  applicant,  and 
order  the  comparison  of  the  trade  mark  with  those  already  regis- 
tered, in  order  to  ascertain  whether  it  infringes  upon  any  of 
them. 

No  trade  mark  or  trade  name  will  be  admitted  or  registered 


PHILIPPINE  ISLANDS  415 

if  it  has  a  resemblance  to  or  similarity  with  any  other  registered 
or  -known  trade  mark  or  trade  name. 

If  the  trade  mark  can  be  admitted  notice  in  writing  thereof 
will  be  sent  to  the  applicant  or  his  attorney,  who  shall  pay  to 
the  Division  of  Archives,  Patents,  Copyrights  and  Trade  Marks 
the  fees  fixed  for  the  issuance  of  the  proper  certificate  of  regis- 
tration, and  the  chief  of  the  aforesaid  division  will  issue  the 
proper  receipt  for  the  amount  paid. 

The  certificate  issued  will  state  the  date  on  which  the  trade 
mark  was  registered,  its  registration  number  and  the  kind  of 
business  in  which  the  said  trade  mark  is  to  be  used.  Another 
certificate  will  accompany  it,  setting  forth  that  the  legal  fees 
have  been  paid  and  that  the  party  concerned  has  complied  with 
all  the  rules  and  provisions  of  the  law ;  the  certificate  first  men- 
tioned shall  bear  a  20  centavo  internal  revenue  stamp,  which 
shall  be  paid  for  by  the  party  concerned  or  his  attorney  and  will 
be  cancelled  with  the  stamp  of  this  division. 

Said  certificates  will  moreover  bt  sealed  with  the  metal  seal 
of  this  division  and  will  have  attached  thereto  one  of  the  fac- 
simile copies  of  the  trade  mark,  a  copy  of  the  description  thereof, 
and  the  affidavit  of  the  party  concerned  or  of  his  attorney;  and 
the  same  shall  be  prima  facie  evidence  of  the  right  to  use  such 
mark. 

All  the  letters  in  the  case  of  each  distinct  inquiry  or  request, 
shall  be  addressed  separately  to  the  Chief  of  the  Division  of 
Archives,  Patents,  Copyrights  and  Trade  Marks,  and  all  remit- 
tances by  postal  money  order,  check  or  draft,  shall  be  made 
payable  to  his  order. 

The  action  of  this  office  will  be  based  on  written  communica- 
tions, and  no  oral  promise,  stipulation,  or  agreement  about  which 
there  shall  be  any  divergence  or  doubt  shall  be  considered. 

No  person  shall  be  allowed  to  revise  or  inspect  the  registry 
books  of  trade  marks  without  the  permission  of  the  chief  of  this 
division  nor  will  reply  be  made  to  any  question  asked  for  the 
purpose  of  ascertaining  whether  certain  trade  marks  have  been 
registered  or  not,  the  name  of  their  owners,  or  the  use  to  which 
they  are  to  be  applied. 

Nor  will  explanations  be  given  as  to  the  interpretation  or  ap- 
plication of  the  provisions  of  the  law  to  which  these  regulations 
are  subject. 

The  application  for  the  registration  of  a  trade  mark  shall  be 
made  personally  or  in  writing,  by  the  owner,  his  attorney,  or  by 
his  duly  authorized  representative. 

Certificates  will  be  delivered  or  sent  by  this  office  to  the  owner 
or  the  person  representing  the  same. 

After  notice  of  the  admission  of  a  trade  mark  has  been  sent, 
no  amendment  of  any  kind  will  be  allowed  in  the  application, 
in  the  facsimile  of  the  mark,  or  in  the  description  thereof. 


416  PHILIPPINE  ISLANDS 

No  change  whatsoever  will  be  allowed  in  the  design  of  a  trade 
mark,  either  as  regards  the  grouping  of  the  figures  of  the  design 
or  the  change  of  their  relative  positions,  and  the  description  must 
be  restricted  to  the  facsimile  of  the  mark:  Provided,  however, 
that  in  the  use  of  the  trade  mark  the  size  most  suitable  may  be 
adopted. 

Any  partial  or  total  amendment  or  modification  of  a  trade 
mark  shall  annul  the  same,  and  the  owner  will  be  obliged  to 
apply  for  a  new  registry,  in  order  to  obtain  a  new  certificate, 
which  shall  be  valid  for  thirty  years,  counting  from  its  date, 
and  for  which  he  shall  pay  the  fees  prescribed. 

Trade  marks  not  registered  will  not  be  returned  to  their  own- 
ers, who  will  be  notified  of  their  rejection  with  the  reasons  there- 
for, and  said  marks  will  be  filed  in  this  office. 

Doubts  or  questions  arising  with  regard  to  the  right  of  owner- 
ship or  use  of  a  trade  mark,  shall  be  heard  and  decided  by  the 
courts  of  justice. 

Documents  Required. 

One  drawing;  letter  of  advice;  statement;  declaration;  and 
power  of  attorney.  (Forms  for  application  may  be  obtained 
from  B.  Singer's  Offices.) 

Assignments. 

Assignments  of  the  right  to  use  a  trade  mark  must  be  made 
before  a  Notary  Public,  and  it  shall  be  the  duty  of  the  party 
concerned  to  file  with  this  division  the  proper  instrument  mak- 
ing the  assignment  of  the  trade  mark  in  duplicate,  for  entry  in 
the  registry  book.  For  such  registration  and  filing  of  the  dupli- 
cate of  said  instrument  a  fee  of  2  pesos  will  be  charged  if  the 
instrument  is  of  less  than  300  words,  -i  pesos  if  over  300,  6 
pesos  if  1,000  or  more.  The  original  will  be  returned  to  the 
party  concerned  with  a  note  of  its  entry ;  unless  he  should  prefer 
a  new  certificate,  in  which  case  he  shall  make  application  there- 
for in  the  prescribed  manner,  annexing  to  his  application  the 
instrument  relative  to  said  assignment,  said  certificate  being 
then  issued. 

Fees. 

Twenty-five  dollars  in  money  of  the  United  States. 

Offenses  and  Penalties. 

The  ownership  or  possession  of  a  trade  mark  heretofore  or 
hereafter  appropriated  shall  be  recognized  and  protected  in  the 
same  manner  and  to  the  same  extent  as  are  other  property  rights 
known  to  the  law.  To  this  end  any  person  entitled  to  the  exclu- 
sive use  of  a  trade  mark  to  designate  the  origin  or  ownership  of 
goods  he  has  made  or  deals  in,  may  recover  damages  in  a  civil 


PHILIPPINE  ISLANDS  417 

action  from  any  person  who  has  sold  goods  of  a  similar  kind, 
bearing  such  trade  mark,  and  the  measure  of  the  damages  suf- 
fere'd,  at  the  option  of  the  complaining  party,  shall  be  either 
the  reasonable  profit  which  the  complaining  party  would  have 
made  had  the  defendant  not  sold  the  goods  with  the  trade  mark 
aforesaid,  or  the  profit  which  the  defendant  actually  made  out 
of  the  sale  of  the  goods  with  the  trade  mark,  and  in  cases  where 
actual  intent  to  mislead  the  public  or  to  defraud  the  owner  of 
the  trade  mark  shall  be  shown,  in  the  discretion  of  the  court, 
the  damages  may  be  doubled.  The  complaining  party  upon 
proper  showing  may  have  a  preliminary  injunction  restraining 
the  defendant  temporarily  from  the  use  of  the  trade  mark  pend- 
ing the  hearing,  to  be  granted  or  dissolved  in  the  manner  pro- 
vided in  the  code  of  civil  procedure,  and  such  injunction,  upon 
final  hearing,  if  the  complainant's  property  in  the  trade  mark 
and  the  defendant's  violation  thereof  shall  be  fully  established, 
shall  be  made  perpetual,  and  this  injunction  shall  be  part  of  the 
judgment  for  damages  to  be  rendered  in  the  same  cause  as  above 
provided.  (Sec.  3.) 

In  order  to  justify  recovery  for  violation  of  trade  mark  rights 
in  the  preceding  section  defined,  it  shall  not  be  necessary  to 
show  that  the  trade  marks  have  been  registered  under  the  royal 
decree  of  1888,  providing  for  registration  of  trade  marks  in  the 
Philippine  Islands,  in  force  during  the  Spanish  sovereignty  in 
these  Islands,  nor  shall  it  be  necessary  to  show  that  the  trade 
mark  has  been  registered  under  this  Act.  It  shall  be  sufficient 
to  invoke  protection  of  his  property  in  a  trade  mark,  if  the  party 
complaining  shall  prove  that  he  has  used  the  trade  mark  claimed 
by  him  upon  his  goods  a  sufficient  length  of  time  so  that  the 
use  of  the  trade  mark  by  another  would  be  an  injury  to  him  and 
calculated  to  deceive  the  public  into  the  belief  that  the  goods  of 
that  other  were  the  goods  manufactured  or  dealt  in  by  the  com- 
plaining party.  (Sec.  4.) 

A  trade  name  is  the  name,  device,  or  mark  by  which  is  in- 
tended to  be  distinguished  from  that  of  others,  the  business,  pro- 
fession, trade  or  occupation  in  which  one  may  be  engaged  and 
in  which  goods  are  manufactured  or  sold  to  the  public,  work  is 
done  for  the  public,  or  professional  services  are  rendered  to  the 
public.  It  is  not  essential  that  the  trade  name  should  appear 
on  the  goods  manufactured  or  dealt  in  by  the  person  owning 
or  using  the  same.  It  is  sufficient  if  the  trade  name  is  used  by 
way  of  advertisements,  signs  over  the  place  of  business,  upon 
letter-heads  and  in  other  ways  to  furnish  to  the  public  a  method 
of  distinguishing  the  business,  trade,  or  occupation  of  the  per- 
son owning  and  using  such  name.  Property  in  trade  names 
shall  be  as  fully  protected  as  property  in  a  trade  mark  by  the 
civil  remedies  provided  in  Section  3  of  this  Act  for4  the  protec- 
tion of  property  in  trade  marks.  (Sec.  5.) 

27 


418  PHILIPPINE  ISLANDS 

Any  person,  who,  with  intent  to  defraud  the  public  or  the 
owner  -of  a  trade  mark  or  trade  name,  shall  use  the  trade  mark 
of  another  on  his  goods  offered  for  sale,  or  the  trade  name  of 
another  in  his  business,  occupation  or  profession,  and  any  per- 
son who,  knowing  that  a  trade  mark  has  been  fraudulently  used 
on  goods  with  the  intent  aforesaid,  shall  sell  such  goods  or  offer 
the  same  for  sale  and  any  person  who  shall  knowingly  aid  or 
abet  another  in  such  fraudulent  use  of  a  trade  mark  or  trade 
name,  shall  be  punished  by  a  fine  of  not  exceeding  $2,500,  or  by 
imprisonment  not  exceeding  three  years,  or  both,  in  the  discre- 
tion of  the  court.  Any  person  knowing  the  purposes  for  which 
such  trade  mark  or  trade  name  is  to  be  used,  and  that  it  is  the 
property  of  one  person,  prints,  lithographs,  or  in  any  way  re- 
produces such  trade  mark  or  trade  name,  or  a  colorable  imita- 
tion thereof,  for  another  person,  to  enable  that  other  person 
fraudulently  to  use  such  trade  mark  or  trade  name  in  the  decep- 
tion of  the  public  and  the  defrauding  of  the  real  owner  of  the 
trade  mark  or  trade  name,  shall  be  punished  by  a  fine  not 
exceeding  $1,000,  or  by  imprisonment  hot  exceeding  eighteen 
months,  or  both,  in  the  discretion  of  the  court.  (Sec.  6.) 

Any  person  who  in  selling  his  goods  shall  give  them  the  gen- 
eral appearance  of  goods  of  another  manufacturer  or  dealer, 
either  in  the  wrapping  of  the  packages  in  which  they  are  con- 
tained, or  in  the  device  or  words  thereon,  or  in  any  other  feature 
of  their  appearance,  which  would  be  likely  to  influence  pur- 
chasers to  believe  that  the  goods  offered  are  those  of  a  manu- 
facturer or  dealer  other  than  the  actual  manufacturer  or  dealer, 
and  who  clothes  the  goods  with  such  appearance  for  the  purpose 
of  deceiving  the  public  and  defrauding  another  of  his  legitimate 
trade,  or  any  subsequent  vender  of  such  goods  or  any  agent  of 
any  vender  engaged  in  selling  such  goods  with  a  like  purpose, 
shall  be  guilty  of  unfair  competition,  and  shall  be  liable  to  an 
action  for  damages  in  which  the  measure  shall  be  the  same  as 
that  provided  for  a  violation  'of  trade  mark  rights,  together  with 
discretionary  power  in  the  court  to  impose  double  damages,  if 
the  circumstances  call  for  the  same.  The  injured  party  may 
also  have  a  remedy  by  injunction  similar  to  that  provided  for 
in  cases  of  violation  of  trade  marks.  This  section  applies  in 
cases  where  the  deceitful  appearance  of  the  goods,  misleading 
as  to  origin  or  ownership,  is  effected  not  by  means  of  technical 
trade  marks,  emblems,  signs,  or  devices,  but  by  the  general  ap- 
pearance of  the  package  containing  the  goods,  or  by  the  devices 
or  words  thereon,  even  though  such  packages,  devices  or  words 
are  not  by  law  capable  of  appropriation  as  trade  marks:  and  in 
order  that  the  action  shall  lie  under  this  section,  actual  intent  to 
deceive  the  public  and  defraud  a  competitor  shall  affirmatively 
appear  on  the  part  of  the  person  sought  to  be  made  liable,  but 
such  intent  may  be  inferred  from  similarity  in  the  appearance  of 


PORTO  Rico  419 

the  goods  as  packed  or  offered  for  sale  to  those  of  the  complain- 
ing party.  (Sec.  7.) 

Any  person  guilty  of  unfair  competition,  as  defined  in  the  pre- 
ceding section,  in  addition  to  the  civil  remedies  to  which  he  may 
be  subject,  shall  also  be  liable  criminally,  in  case  of  conviction 
for  the  same,  to  a  fine  of  not  exceeding  $2,000  or  imprisonment 
not  exceeding  two  years,  or  both,  in  the  discretion  of  the  court. 
(Sec.  8.) 

No  action,  or  suit,  or  criminal  prosecution  shall  be  maintained 
under  the  provisions  of  this  Act  in  any  case  where  the  violation 
of  the  trade  mark  or  trade  name  or  the  unfair  competition  com- 
plained of  has  been  in  any  unlawful  business,  or  with  respect  to 
any  article  trade  in  which  is  unlawful,  or  is  against  public  policy, 
or  in  any  case  where  the  trade  mark,  trade  name,  or  the  indication 
of  origin,  ownership,  or  manufacture  have  been  used  by  the 
complaining  and  injured  party  for  the  purpose  of  himself  de- 
ceiving the  public  with  respect  to  the  character  of  the  merchan- 
dise sold  by  him  or  of  the  business  or  profession  or  occupation 
carried  on  by  him.  (Sec.  9.)  • 

Marking  Goods  :     "Trade  Mark  Registered." 

Food  and  Drugs  Law. 

The  Food  and  Drugs  Act  (No.  1655)  is  modeled  after  the 
United  States  law,  and  as  soon  as  due  notice  of  an  amendment 
to  the  United  States  law  is  received,  an  amendment  analogous 
in  substance,  is  made  in  the  Philippine  law.  This  procedure 
tends  to  uniformity,  and  all  products  that  satisfy  the  tests  re- 
quired in  the  United  States  should  meet  the  requirements  there. 

Under  the  Philippine  law  all  importations  of  food  and  drugs 
are  subject  to  examination  and  analysis,  and  any  consignment 
found  improperly  labeled  or  adulterated  may  be  barred  from 
entry. 


PORTO  RICO 

The  population  of  the  island  of  Porto  Rico  in  1911  was  esti- 
mated at  1,118,200.  The  area  of  this  island  is  3,668  square 
miles. 

The  imports  consist  of  cotton,  woolen,  and  silk  goods,  rice, 
flour,  codfish  and  provisions  of  every  sort. 

Law. 

Sections  213  to  222  of  the  Political  Code  of  Porto  Rico,  ap- 
proved March  1,  1902. 


42O  PORTO  Rico 

Duration. 

A  certificate  of  registry  shall  remain  in  force  for  twenty  years 
from  its  date,  except  in  cases  where  the  trade  mark  or  design  is 
claimed  for  and  applied  to  articles  not  manufactured  in  Porto 
Rico,  and  in  which  it  receives  protection  under  the  laws  where 
manufactured  for  a  shorter  period,  in  which  case  it  shall  cease 
to  have  any  force  in  Porto  Rico  by  virtue  of  this  Act  at  the  time 
that  such  trade  mark  or  design  ceases  to  be  exclusive  property 
elsewhere.  At  any  time  during  six  months  prior  to  the  expira- 
tion of  the  period  of  twenty  years  such  registration  may  be  re- 
newed on  the  same  terms  and  for  a  like  period. 

Who  May  Apply. 

The  owners  of  trade  marks  or  commercial  designs  used  in 
commerce  in  Porto  Rico,  provided  such  owners  shall  be  domi- 
ciled in  Porto  Rico  or  the  United  States,  or  located  in  any  for- 
eign country  which  affords  similar  privileges  to  citizens  of  the 
United  States  or  Porto  Rico,  may  obtain  registration  of  trade 
marks  or  commercial  designs. 

Mode  of  Application  and  Procedure. 

A  facsimile  of  the  trade  mark  must  be  attached  to  the  state- 
ment, and  two  additional  facsimiles  should  accompany  the  ap- 
plication. A  statement  specifying  the  name,  principal  place  of 
business  and  citizenship  of  the  party  applying  must  be  filed  in 
the  office  of  the  Secretary  of  Porto  Rico;  together  with  a  state- 
ment of  the  class  of  merchandise,  and  the  particular  description 
of  goods  comprised  in  such  class  to  which  the  particular  trade 
mark  or  design  has  been  appropriated ;  a  description  of  the  trade 
mark  or  design  itself  with  facsimiles  thereof;  and  a  statement 
of  the  mode  in  which  the  same  is  applied  and  affixed  to  goods, 
and  the  length  of  time  during  which  the  trade  mark  or  design 
has  been  used. 

The  application  prescribed,  in  order  to  create  any  right  what- 
ever in  favor  of  the  party  filing  it,  must  be  accompanied  by  a 
written  declaration  verified  by  the  person,  or  by  a  member  of  a 
firm  or  by  an  officer  of  a  corporation  applying,  to  the  effect  that 
such  party  has  at  the  time  a  right  to  the  use  of  the  trade  mark 
or  design  sought  to  be  registered,  and  that  no  other  persons, 
firm  or  corporation  has  the  right  to  such  use,  either  in  the  iden- 
tical form  or  in  any  such  near  resemblance  thereto  as  might  be 
calculated  to  deceive ;  and  that  the  description  and  facsimiles 
presented  for  registry  truly  represent  the  trade  mark  or  design 
sought  to  be  registered. 

The  time  of  the  receipt  of  such  application  shall  be  noted  and 


PORTO  Rico  421 

recorded.  But  no  alleged  trade  mark  or  design  shall  be  regis- 
tered unless  the  same  appear  to  be  lawfully  used  as  such  by  the 
applicant,  nor  which  is  merely  the  name  of  the  applicant;  nor 
which  is  identical  with  a  registered  or  known  trade  mark  or 
design  owned  by  another  and  appropriated  to  the  same  class 
of  merchandise  or  which  so  nearly  resembles  the  lawful  trade 
mark  or  design  of  another  as  to  be  likely  to  cause  confusion  or 
mistake  in  the  mind  of  the  public  or  to  deceive  purchasers.  In 
an  application  for  registration  the  Secretary  of  Porto  Rico  shall 
decide  the  presumptive  lawfulness  of  claim  to  the  alleged  trade 
mark  or  design. 

Fees. 

The  fee  for  registration  of  each  trade  mark  is  $10.00  and  for 
recording  25  cents  for  each  one  hundred  words.  For  the  cer- 
tified copy  attached  to  the  certificate  of  registration  20  cents 
for  each  one  hundred  words  and  for  the  certificate  $1.00. 

Requirements. 

One  drawing ;  letter  of  advice  ;  statement ;  declaration ;  power 
of  attorney;  and  six  facsimiles  of  the  trade  mark.  (Forms  for 
application  may  be  obtained  from  B.  Singer's  Offices.) 

Offenses  and  Penalties. 

Every  person  who  willfully  reproduces,  copies,  imitates,  forges, 
or  counterfeits,  or  procures  to  be  reproduced,  copied,  imitated, 
forged  or  counterfeited,  any  trade  mark  usually  affixed  by  any 
person  to  his  goods,  which  has  been  duly  recorded  in  the  office 
of  the  Secretary  of  Porto  Rico  or  with  the  Commissioner  of 
Patents  in  the  United  States  Patent  Office,  or  any  label  or 
brand,  composed  in  whole  or  in  part  of  a  reproduction  of  said 
trade  mark,  who  affixes  the  same  to  goods  of  essentially  the 
same  descriptive  properties  and  qualities  as  those  referred  to 
in  the  registration  of  such  trade  mark,  with  intent  to  pass  off, 
or  to  assist  other  persons  to  pass  off,  any  goods  to  which  such 
reproduced,  copied,  imitated,  forged  or  counterfeited  trade  mark, 
or  label,  or  brand  is  affixed,  or  intended  to  be  affixed,  as  the 
goods  of  the  person,  firm,  company,  or  corporation  owning  the 
said  trade  mark,  is  guilty  of  a  misdemeanor. 

Every  person  who  sells  or  keeps  for  sale,  or  manufactures,  or 
prepares  for  the  purpose  of  sale,  any  goods  upon,  or  to  which 
any  reproduced,  copied,  imitated,  forged  or  counterfeited  trade 
mark  or  label  or  brand,  composed  in  whole  or  in  part  of  such 
reproduced,  copied,  imitated,  forged  or  counterfeited  mark  has 
been  fixed,  after  such  trade  mark  has  been  recorded  in  the  office 
of  the  Secretary  of  Porto  Rico,  or  with  the  Commissioner  of 
Patents  in  the  United  States  Patent  Office,  intending  to  repre- 
sent such  goods  as  the  genuine  goods  of  the  person,  firm,  com- 


422  PORTO  Rico 

pany,  or  corporation,  owning  the  said  trade  mark,  knowing  the 
same  to  be  reproduced,  copied,  imitated,  forged,  or  counterfeited, 
is  guilty  of  a  misdemeanor. 

The  phrases  "forged  trade  mark"  and  "counterfeited  trade 
mark"  or  their  equivalents,  include  every  alteration  or  imitation 
of  any  trade  mark  so  resembling  the  original  as  to  be  likely  to 
deceive. 

The  phrase  "trade  mark"  as  used  in  the  three  preceding  sec- 
tions includes  every  description  of  word,  letter,  device,  emblem, 
stamp,  imprint,  brand,  printed  ticket,  label,  or  wrapper,  usually 
affixed  by  any  mechanic,  manufacturer,  druggist,  merchant,  or 
tradesman,  to  denote  any  goods  to  be  goods  imported,  manu- 
factured, produced,  compounded,  or  sold  by  him,  other  than 
any  name,  word,  or  expression  generally  denoting  any  goods  to 
be  of  some  particular  class  or  description. 

Every  person  who  has  in  his  possession,  or  who  uses  any 
cask,  bottle,  vessel,  case,  cover,  label,  brand,  or  other  thing  bear- 
ing, or  having  in  any  way  connected  with  it,  the  trade  mark  of 
another,  which  has  been  duly  recorded  in  the  office  of  the  Secre- 
tary of  Porto  Rico,  or  with  the  Commissioner  of  Patents  in  the 
United  States  Patent  Office,  or  the  trade  name  of  another,  for 
the  purpose  of  disposing  of  any  article  other  than  that  which 
such  cask,  bottle,  vessel,  case,  cover,  label,  brand,  or  other  thing 
originally  contained,  or  is  connected  with  by  the  owner  of  such 
trade  mark  or  trade,  name,  with  intent  to  deceive  or  defraud,  is 
guilty  of  misdemeanor. 

Every  person  who  wilfully  sells,  or  trafficks  in  any  cask,  keg, 
bottle,  vessel,  siphon,  can,  case,  or  other  package  bearing  the 
duly  filed  trade  mark  or  name  of  another,  printed,  branded, 
stamped,  engraved,  etched,  blown,  or  otherwise  attached  or  pro- 
duced thereon,  or  refills  any  such  cask,  keg,  bottle,  vessel,  siphon, 
can,  case,  or  other  package  with  intent  to  defraud  the  owner 
thereof,  without  the  consent  of  the  owner  thereof,  or  unless  the 
same  shall  have  been  purchased  from  the  owner  thereof,  is  guilty 
of  misdemeanor. 

Every  person  who  shall  wilfully  deface,  erase,  obliterate,  cover 
up,  or  otherwise  remove,  destroy,  or  cancel  the  duly  filed  trade 
mark  or  name  of  another,  printed,  branded,  stamped,  engraved, 
etched,  blown,  impressed,  or  otherwise  attached  to,  or  produced 
upon  any  cask,  keg,  bottle,  vessel,  siphon,  can,  case,  or  other 
package,  or  refilling  such  cask,  keg,  bottle,  vessel,  siphon,  can, 
case  or  other  package,  with  intent  to  defraud  the  owner  thereof, 
without  the  consent  of  the  owner,  or  unless  the  same  shall  have 
been  purchased  from  the  owner,  is  guilty  of  misdemeanor. 

Marking  Goods:    "Trade  Mark  Registered." 

Assignment. 
Same  rules  and  forms  as  in  the  United  States. 


PORTUGAL  423 


PORTUGAL 

The  area  of  the  kingdom  of  Portugal  on  the  Continent,  is 
34,254  square  miles.  The  population  in  1911  was  estimated  to 
be  5,019,267.  The  Azores  have  922  square  miles  and  a  popula- 
tion of  about  257,300 ;  Madeira,  314  square  miles  and  a  popula- 
tion of  about  152^000. 

It  is  difficult  to  say  what  proportion  of  the  total  area  of  the 
country  is  under  cork  forests,  more  especially  as  these  are  all  in 
the  hands  of  private  individuals,  the  state  forests  being  very  few 
in  number  in  Portugal. 

The  manufactures  of  Portugal  are  unimportant,  being,  in  fact, 
practically  confined  to  the  national  market,  including  Brazil,  and 
consist  principally  of  cotton  and  woolen  goods,  boats,  iron,  im- 
plements, etc. 

MONEY— The  milreis   (1,000  reis)=4s.  5d.=$1.06. 

WEIGHTS  AND  MEASURES — The  metric   system. 

Law. 

Laws  of  December  15,  1894 ;  Decree  of  March  16,  1905. 
Territory  Covered. 

Trade  marks  cover  only  Portugal  and  the  Azores  and  Madeira 
Islands,  but  the  registration  can  be  extended  by  a  subsequent 
application  to  the  following  colonies :  Cape  Verde  Islands,  Port- 
uguese Guinea,  St.  Thomas'  and  Prince's  Island,  Angola,  Mo- 
zambique, including  Delagoa  Bay,  India  (Goa,  Damao  and  Diu), 
Macau,  Timor,  and  the  territories  belonging  to  the  Mozam- 
bique and  Nyassa  Companies. 

Term  of  Protection 

Trade  marks  are  registered  for  ten  years,  but  at  the  expira- 
tion of  this  term  they  can  be  renewed  indefinitely,  provided  the 
application  is  filed  within  the  last  year,  accompanied  with  the 
original  certificate  of  registration,  eight  copies  of  the  mark,  and 
a  block.  Priority  can  be  claimed  under  the  International  Con- 
vention. 

Who  May  Register. 

Portuguese  manufacturers,  agriculturists  and  merchants,  or 
foreigners  belonging  to  countries  having  treaties  with  Portugal 
or  granting  reciprocity  to  Portuguese  subjects.  The  applicant 
may  be  any  person,  firm,  society,  company  or  corporation. 

Unregistrable. 

Are : — marks  offensive  to  morality  or  religion ;  marks  con- 
taining figures  representing  the  heads  of  states,  members  of 


424  PORTUGAL 

the  reigning'  family,  blazons,  arms  or  decoration,  unless  the  ap- 
plicant can  prove  that  he  has  had  granted  to  him  the  special  per- 
mission of  the  persons  to  whom  the  marks  refer,  or  has  the  right  to 
use  such  blazons  or  arms ;  marks  containing  the  names  of  in- 
dividuals, firms,  or  the  names  of  a  collection  of  individuals  which 
the  applicant  cannot  legitimately  use ;  marks  containing  drawings 
of  decorations  awarded  by  the  Portuguese  Government ;  marks 
containing  drawings  of  medals  or  referring  to  diplomas  or  hon- 
orable mentions  to  which  the  applicant  has  not  the  right;  marks 
making  false  indications  of  origin ;  and  marks  which  may  be 
confounded  with  another  already  registered. 

Documents  Required. 

1.  A  full  and  clear  description  of  the  mark,  showing  the  class 
or  classes  of  goods  in  connection  with  which  the  mark  is  to  be 
registered,  specifying  how  the  mark  is  to  be  applied  to  them, 
and   stating-  nationality,  profession,  address  and   establishments 
of  the  applicant. 

2.  Six   copies   of  the  mark,   not   exceeding  ten   centimeters 
square. 

3.  A  power  in  Portuguese,  simply  signed  by  the  applicant. 
Legalization  is  not  necessary. 

4.  A  block  not  exceeding  100  mm.  and  having  a  thickness 
of  24  mm. 

5.  An  unlegalized  official  certificate  showing  registration  in 
the  applicant's  native  country. 

Opposition. 

He  who  shall  have  first  employed  a  definite  trade  mark  even 
though  he  has  not  deposited  and  registered  it,  may  still  oppose 
the  deposit  or  registration  already  demanded  or  effected  by  an- 
other of  a  mark  identical  with  his  own  or  liable  to  be  confounded 
with  it. 

No  opposition  can  be  admitted  when  six  months  have  ex- 
pired since  the  deposit  or  registrv,  or  when  the  opponent  shall 
have  used  ,his  mark  more  than  six  months  without  meanwhile 
demanding  deposit  or  registry. 

The  opposition  contemplated  in  the  preceding  paragraphs  is  to 
be  made  in  the  form  of  a  protest  addressed  to  the  Bureau  hav- 
ing charge  of  deposit  and  registry ;  and  cancellation  and  regis- 
try shall  take  place  only  when  the  ordinary  tribunals  in  the 
terms  of  common  law  shall  have  adjudged  the  application 
proper. 

In  Sec.  89  of  the  trade  mark  law  of  Portugal,  it  is  provided 
that  a  trade  mark  application  shall  be  published  in  the  official 
publication  designed  for  the  purpose,  and  that  thereafter  a  period 
of  three  months  shall  be  allowed  within  which  opposition  may 


PORTUGAL  425 

be  filed  by  any  person  who  shall  deem  himself  prejudiced  by 
the  registration.  Upon  the  filing  of  such  an  opposition  accom- 
panied by  the  evidence  upon  which  it  rests,  the  facts  shall  be 
examined  and  the  mark  accepted  or  rejected,  as  justice  shall 
require. 

An  application  having  been  filed  for  the  registration  of  a 
trade  mark  "Luz  do  Pharol"  as  a  trade  mark,  the  Colonial  Oil 
Co.  filed  an  opposition  upon  the  ground  that  it  conflicted  with 
a  previous  registration  of  their  own,  to-wit,  "Luz  do  Sol  Rus- 
so."  The  application  was  rejected,  but  this  decision  was  later 
reversed  upon  appeal,  it  being  held  that  there  was  no  probability 
of  confusion  between  the  two  marks,  the  mere  presence  in  each 
of  the  word  "Luz"  not  being  such  a  similarity  as  would  cause 
them  to  be  mistaken  one  for  the  other.  (Boletim  da  Proprie- 
dade  Ind.,  1907,  p.  367.) 

Modifications. 

Trade  marks  can  be  modified  by  the  person  or  firm  who  ef- 
fected the  registration  and  the  modification  can  be  registered. 
The  same  papers  as  for  original  registration  are  wanted. 

Assignments. 

Transfers  or  sales  of  Portuguese  trade  marks  can  be  effected 
by  deeds  executed  in  accordance  with  the  law  of  the  country  in 
which  they  were  signed.  When  there  is  no  contract  to  the 
contrary,  it  is  understood  that  the  mark  goes  with  the  indus- 
trial or  commercial  establishment  to  which  it  refers.  For  reg- 
istering an  assignment,  the  following  papers  are  to  be  furnished : 
(a)  Deed  of  sale,  translated  into  Portuguese  by  a  sworn  trans- 
lator and  legalized  by  a  Consul  of  Portugal.  (&)  Portuguese 
power  of  attorney,  simply  signed  by  the  assignee,  (c}  Copies 
of  the  mark,  (d)  Full  statement  of  the  name,  nationality,  pro- 
fession and  address  of  the  assignee  and  place  where  the  indus- 
trial or  commercial  establishment  is  located,  as  well  as  statement 
of  the  price  of  the  sale. 

Classes  of  Goods. 

The  right  of  property  in  a  mark  is  limited  to  the  class  of 
goods  for  which  it  has  been  registered.  There  are  eighty  classes. 
The  same  mark,  used  on  different  goods,  shall  be  considered  as 
separate  marks. 

Classification. 

I.     Agricultural  Products ;  Raw   Materials. 

1.  Agricultural    and   horticultural   products,    grains,    vegeta- 
bles, flour,  raw  cotton  and  other  vegetable  fibres,  seeds,  plants. 

2.  Wood  for  structural  and  heating  purposes,  charcoal,  cork 
and  barks. 


426  PORTUGAL 

3.  Tars,  resins  and  raw  gums,  caoutchouc. 

4.  Live  stock. 

5.  Hides,  hair,  sea  weed,  silks  and  feathers  in  raw  condition. 

6.  Fish    scales,    ivory,   mother   of    pearl,    corals,    whalebone, 
horns,  bones,  raw  or  half  finished. 

7.  Mineral,  earths,  stones,  coal,  coke,  briquets. 

II.     Half-Finished  Materials. 

8.  Metals  in  bulk,  ingots,  bars,  sheets  or  plates,  wires,  junk. 

9.  Oils,  non-edible  essences  and  fats,  mineral  oils. 

10.  Prepared    leathers    and    hides,    caoutchouc    and    similar 
compounds   in   sheets,  threads,  tubes,   squares  and  stoppers   of 
cork. 

11.  Giemical  compounds  for  industry,  photography,  etc.,  pre- 
pared tanning  materials,  drugs. 

12.  Explosives,  gun  powders,  caps,  fuses,  matches,  igniting 
material,  fire-works. 

13.  Artificial  and  natural  fertilizers,  chemical  substances  for 
agriculture  and  horticulture. 

14.  Soa'ps   for  industry  and  house  keeping,   compounds   for 
washing,  bleaching,  cleaning  and  spot  removing  purposes. 

15.  Dyes,  mercerizing  means. 

III.     Tools,  Machinery,  Conveying  Means. 

16.  Hand  tools,  tool  machinery,  sewing  machines  and  their 
parts,  grinding  devices. 

17.  Agricultural    machines,    farming   implements    and    their 
parts. 

18.  Steam  engines,  and  their  parts  (except  locomotives.) 

19.  Boilers,  pipes,  barrels  and  metal  tanks. 

20.  Electricity  (machinery  and  accessories.) 

21.  Horology,  chronometry. 

22.  Various  kinds  of  machines  and  apparatus  and  their  parts. 

23.  Ship-building  and  accessories. 

24.  Railroad  supplies,  stationary  and  rolling  stock. 

25.  Wheelwright's    work,    coach-building,    farriery,    automo- 
biles and  bicycles. 

26.  Saddlery,  harness-making,  whips,  etc. 

27.  Ropes,  cordage,  twines  of  hair  or  fibres  of  any  kind,  wire 
ropes,  driving  belts. 

„  28.     Fire-arms  for  war  and  sport  and  ammunition  therefor. 

IV.     Building  Material. 

29.  Lime,  plaster,  cement,  pozzuolana,  bricks,  tiles  and  other 
ceramic  products,  marble,  slate  and  other  finished  or  half-finished 
materials. 

30.  Carpentry,  cabinet-making. 

31.  Metallic  structural  material. 


PORTUGAL  427 

32.  Foundry,     lock-smithing,     nail     manufacturing,     screws, 
chains,  paper,  fabrics  and  polishing  means. 

33.  Paints   for  buildings,  varnishes  and  accessories,  waxes, 
encaustics  and  glues. 

34.  Wall  paper  and  substitutes  for  wall  tapestry. 

35.  Heating  devices,  ventilating  apparatus,  elevators  for  per- 
sons and  freight. 

V.     Furniture  and  Housekeeping  Materials. 

36.  Cabinet  making,  household  furniture,  frames. 

37.  Beds,  bedding,  feathers,  downs,  wool  and  sea  weed  pre- 
pared for  bedding. 

38.  Hardware,   kitchen   furniture,   bath   anoaratus,   sprayers, 
filters  and  extinguishers. 

39.  Lighting  and  heating  articles. 

40.  Glassware,  crystals,  plate  glass,  mirrors. 

41.  Ceramic   products,   except   those   destined   for   structural 
purposes. 

42.  Cutlery,  sharp  instruments,  blank  weapons. 

43.  Wooden  ware,  brushes,  brooms,  mats,  straw  mats,  ordi- 
nary basket  work. 

VI.     Threads,  Textile  Fabrics,  Carpets,  Tapestry  and  Garments. 

44.  Threads  and  fabrics  of  wool  or  hair. 

45.  Threads  and  fabrics  of  silk. 

46.  Threads  and  fabrics  of  hemp,  flax,  jute  and  other  fibers. 

47.  Threads  and  fabrics  of  cotton. 

48.  Ready-made  garments  of  all  kinds. 

49..  Lingerie,  underwear  and  housekeeping  linen  goods. 

50.  Hat  making,  fashions,  millinery   feathers,  artificial  flow- 
ers. 

51.  Embroidery,  trimmings,  galloons,  buttons,  laces,  ribbons. 

52.  Hosiery,  gloves,  notions,  corsets,  needles  and  pins. 

53.  Shoes  of  all  kinds,  blacking  and  greases  for  leather. 

54.  Walking  sticks,  umbrellas,  parasols,  traveling  articles. 

55.  Tents,  wagon  blankets,  oil  cloth,  cloth  covered  with  caout- 
chouc, linoleum. 

VII.     Fancy  Goods. 

56.  Jewelry,  gold  and  silver  goods,  genuine  or  imitation. 

57.  Leather  articles,  fans,  toys,  fine  basket  work. 

58.  Perfumery,   soaps,  combs,  sponges  and  other  toilet  ac- 
cessories. 

59.  Smoking  accessories,  cigarette  papers,  prepared  tobacco. 

60.  Toys,  play  things,  playing  cards,  articles  of  fishing,  hunt- 
ing and  sport. 

VIII.     Foodstuffs. 

61.  Meats,  fish,  poultry  and  eggs,  game  in  fresh  condition. 

62.  Preserved  food,  salt  meats. 


428  PORTUGAL 

63.  Fresh  or  dry  vegetables  and  fruits. 

64.  Butter,   cheese,  edible  greases  and  oils,   vinegars,   salts, 
condiments,  yeast. 

65.  Bread,  dough  products. 

63.  Pastry,  confectionery,  chocolates,  cocoa,  sugars,  honey, 
jams. 

67.  Colonial  goods,  spices,  teas,  coffees  and  substitutes. 

68.  Wines,  sparkling  wines,  cider,  beers,  alcohols  and  bran- 
dies, and  other  alcohol-containing  liquors. 

69.  Mineral  and  gas-containing  waters,  lemonades,  syrups. 

70.  Various  groceries,  candles,  tapers,  night  lamps  and  wicks. 

71.  Foods  for  animals. 

IX.     Instruction,  Sciences,  Fine  Arts,  Etc. 

72.  Prints,  papers  and  card  boards,  stationery,  books,  articles 
for  offices,  writing,  printing  and  marking  inks,  book  bindings. 

73.  Fine  colors  and  accessories  for  paintine. 

74.  Artistic  and  ornamental  objects,  sculpture,  paintings,  en- 
gravings or  lithographs,  etc.,  photography,  printing  type. 

75.  Scientific,  optical  and  photographical  instruments,  stand- 
ard weights  and  measures,  scales. 

76.  Any  kind  of  musical  instruments. 

77.  Materials   for   instruction,   models,  maps,   charts,   school 
furniture,  gymnastical  apparatus. 

78.  Instruments  and  apparatus  for  surgery,  medicine,  phar- 
macy and  orthopedy. 

79.  Pharmaceutic   products,   bandages,    disinfectants,    veteri- 
nary products. 

80.  Diverse   articles,   not   included   in  the   preceding  classes 
or  which  are  not  specified. 

Penalties. 

Imprisonment  from  one  to  six  months,  and  in  every  case  a 
fine  of  from  10,000  to  100,000  reis,  or  the  latter  penalty,  only, 
may  be  imposed  upon, 

1st.     Those  who  counterfeit  a  trade  mark ; 

2nd.  Those  who  use  the  mark  of  another  or  a  counterfeit 
mark ;  and 

3rd.  Those  who,  with  evil  intent  sell,  or  offer  for  sale  articles 
bearing  a  counterfeit  mark,  or  one  fraudulently  employed  or  ap- 
propriated. 

Counterfeiting  a  trade  mark  consists  in  its  entire  and  fraud- 
ulent imitation  bv  whatever  means.  (Art.  13.) 

Imprisonment  from  one  to  three  months  and  a  fine  of  from 
5,000  to  50,000  reis,  or  the  latter  penalty  only,  may  be  imposed 
upon, 

1st.  Those  who  simulate  a  trade  mark  so  as  to  deceive  pur- 
chasers ; 


PORTUGAL  429 

2nd.  Those  who  fraudulently  use  a  trade  mark  so  simulating 
the  mark  of  another  as  to  be  confounded  with  it; 

3rd.  Those  who,  with  evil  intent,  sell  or  offer  for  sale  goods 
marked  as  indicated  in  this  article. 

Simulation  in  the  sense  of  the  law  does  not  require  a  com- 
plete likeness  between  the  marks.  It  is  enough  if  the  simulat- 
ing marks  contain  elements  tending  to  deceive  purchasers  as 
to  the  nature  and  origin  of  the  goods.  (Art.  14.) 

The  provisions  of  Art.  22  of  the  Penal  Code  apply  to  those 
who  counterfeit  the  Government  stamp,  and  those  who  fraudu- 
lently use  counterfeit  stamps. 

The  same  penalties  are  incurred  by  those  who  with  evil  in- 
tent sell  or  expose  for  sale  goods  bearing  counterfeit  stamps. 
(Art.  15.) 

In  case  of  the  repetition  of  the  offense  the  penalties  prescribed 
in  Articles  13,  14,  and  15  shall  be  doubled. 

It  is  a  repetition  when  the  delinquent  having  been  condemned 
by  the  final  judgment  of  a  tribunal  for  an  offense  contemplated 
in  this  law,  commits  an  offense  of  the  same  nature  within  five 
years  from  the  judgment. 

There  is  no  repetition  if  the  first  offense  has  been  pardoned  or 
.the  offender  rehabilitated. 

Suits  and  Jurisdiction. 

Owners  of  trade  marks  who  consider  themselves  injured  by 
any  of  the  offenses  contemplated  and  punishable  by  Articles  13, 
14  and  15  may  bring  criminal  action  or  sue  for  damages. 

The  two  actions  cannot  be  instituted  cumulatively.     (Art.  17.) 

It  shall  be  the  duty  of  the  public  prosecutor,  first,  to  prosecute 
those  who  commit  the  offenses  contemplated  in  Articles  13  and 
15;  second,  to  intervene  in  suits  instituted  by  owners  for  the 
application  of  the  penalties  established  by  Art.  14.  Neverthe- 
less, the  provisions  of  Art.  27  of  the  Penal  Code  will  be  en- 
forced. (Art.  18.) 

The  civil  and  commercial  courts  have  exclusive  jurisdiction, 
first,  of  suits  for  damages  under  Articles  13  and  15 ;  second, 
of  actions  to  determine  the  facts  indicated  in  Art.  14,  and  the 
proportionate  indemnity. 

In  localities  where  tribunals  of  commerce  are  established  these 
shall  be  competent  to  take  cognizance  of  the  suits  referred  to 
in  this  Article  when  they  have  reference  to  commercial  marks. 
The  civil  courts  are  alone  -competent  in  suits  relative  to  man- 
ufacturer's marks,  and  to  commercial  marks  in  localities  where 
there  are  no  tribunals  of  commerce. 

Criminal  courts  take  exclusive  cognizance,  first,  of  actions  to 
determine  facts  and  apply  the  penalties  referred  to  in  Articles 
13  and  15 ;  second,  of  actions  to  apply  the  penalties  prescribed 
in  Art.  14.  (Art.  19.) 


430  PORTUGAL 

Such  of  these  actions  as  are  not  based  on  Art.  15  shall  be 
treated  as  for  misdemeanors.  (Art.  20.) 

The  actions  named  under  No.  1  of  Art.  9  can  only  be  brought 
by  virtue  of  a  judgment  after  final  decision  of  the  criminal  tri- 
bunal competent  by  No.  1  of  Art.  20,  declaring  pertinent  and 
established  the  accusation  founded  on  one  of  the  acts  set  forth 
in  Articles  13  and  15. 

In  this  case  the  judgment  of  the  criminal  court  completely 
establishes  the  existence  and  exactness  of  the  fact  alleged,  and 
the  civil  or  commercial  court  has  only  to  decide  if  it  is  a  case 
for  damages,  and  to  fix  the  amount.  (Art.  21.) 

The  actions  referred  to  in  Art.  20  can  only  be  brought  when 
bv  a  final  decision  of  either  a  criminal  or  civil  court  in  conform- 
ity with  Art.  19,  No.  2  and  paragraph  1,  one  of  the  facts  re- 
cited in  Art.  14  has  been  established.  In  that  case  the  judgment 
of  the  civil  or  commercial  court  establishes  completely  the  exist- 
ence and  the  exactness  of  the  allegation,  and  the  criminal  court 
has  only  to  fix  the  penalty.  (Art.  22.) 

For  suits  under  this  law  either  the  plaintiff's  or  defendant's 
tribunal  is  competent,  at  the  election  of  the  plaintiff.  (Art.  23.) 

When  there  is  reason  to  suspect  the  existence  of  any  of  the 
conditions  named  in  Articles  13  and  15,  the  parties  concerned 
and  the  public  prosecutor  may  demand  before  the  competent 
tribunals  and  in  the  terms  prescribed  by  law  the  attachment  of 
the  articles  improperly  and  fraudulently  marked  or  stamped,  as 
well  as  the  appliances  used  in  the  imitation  of  the  marks  or  in 
counterfeiting  the  marks  or  stamps.  (Art.  24.) 

Sec.  1.  If  the  attachment  is  ordered  on  the  demand  of  inter- 
ested parties,  Jhey  shall  give  bond  for  damages  and  costs. 

Sec.  2.  The  attachment  shall  become  void  if  within  thirty 
days  the  complainant  does  not  bring  suit  in  conformity  with 
this  law. 

The  articles  attached  shall  serve  as  security  for  payment  of 
the  penalty  due  the  Treasury,  when  the  attachment  has  been  at 
the  instance  of  the  public  prosecutor,  or  for  payment  of  dam- 
ages and  costs  if  it  has  been  at  the  instance  of  interested  parties. 
(Art.  25.) 

As  far  as  possible  without  injury  to  the  merchandise  stamps 
found  false,  and  counterfeit  and  simulative  marks  and  those  not 
in  conformity  with  this  law,  and  the  appliances  specially  intend- 
ed for  the  fabrication  'of  such  stamps  and  marks,  shall  be  put 
out  of  use.  (Art.  26.) 

The  court  which  shall  determine  the  existence  and  exactness 
of  the  acts  specified  in  Articles  13,  14  and  15,  may  order  that 
the  judgment  be  published  in  the  newspapers  it  may  designate 


PORTUGAL  431 

and  affixed  for  a  week  to  the  door  of  the  delinquent's  place  of 
business.     (Art.  27.) 

Priority. 

According  to  the  provisions  of  the  Portuguese  law,  priority 
in  complying  with  the  provisions  of  the  statute  regarding  regis- 
tration is  the  test  of  title  to  a  trade  mark,  and  priority  is  deter- 
mined by  the  relative  dates  of  filing  applications  to  register.  Ap- 
plication was  filed  on  Sept.  7  for  the  registration  of  a  trade 
mark  in  Portugal.  Registration  of  the  same  mark  was  effected 
in  Portugal  by  another  through  the  International  Bureau  at 
Berne  under  date  of  Oct.  20  of  the  same  year.  The  Portuguese 
application  was  subsequently  granted.  It  was  held  that  the  later 
registration  took  precedence,  because  of  the  priority  in  filing  the 
application  upon  which  it  was  granted. 

The  trade  mark  "Reka"  has  been  held  by  a  Portuguese  court 
to  be  an  infringement  upon  the  trade  mark  "Eureka"  for  the 
same  goods.  The  registration  of  the  latter  trade  mark  will  pre- 
vent the  subsequent  registration  of  the  former.  Considering, 
the  court  says,  that  the  average  purchaser  of  the  goods  on  which 
the  mark  is  used  is  uneducated  and  has  not  the  discernment 
to  distinguish  minutely  between  similar  marks,  the  two  words 
are  likely  to  be  confused,  one  with  the  other. 

Application  being  made  for  registration  as  a  trade  mark  of 
a  royal  crown,  the  application  was  rejected  because,  it  being  an 
emblem  of  royalty,  the  right  to  the  use  thereof  could  not  be  ac- 
quired by  a  private  individual.  The  court,  however,  holds  that, 
inasmuch  as  royalty  has  been  abolished  in  Portugal  by  the  es- 
tablishment of  the  Republic,  no  reason  now  exists  for  denying 
the  registration.  (Boletim  da  Propriedade  Ind.,  1911,  pp.  5,  81.) 

Conflicting  Trade  Marks. 

A  trade  mark  having  been  registered  containing  the  image 
and  name  of  Santo  Antonio,  followed  by  the  name  "Romariz," 
it  has  been  held  improper  by  the  Portuguese  court  to  allow  the 
registration  of  another  mark  containing  the  same  features  and 
name,  notwithstanding  there  is  a  variety  of  differences  between 
the  marks  as  used,  when  they  are  compared,  one  with  the  other. 
The  court  declared  itself  unable  to  avoid  the  conclusion  that  the 
similarities  were  such  as  would  cause  a  harmful  confusion  in 
the  public  mind,  which  it  is  the  purpose  of  the  trade  mark  law 
to  avoid.  Absolute  identity  is  not  required,  that  registration  may 
be  refused.  It  is  enough  that  the  differences  are  not  such  as 
to  remove  the  possibility  of  confusion  between  the  goods.  (Bol- 
etim da  Propriedade  Ind.,  1910,  p.  387.) 


432  PORTUGAL 

Law  in  Force  in  Portugal  to  Prevent  the  Sale  or  Importation 
of  Goods  Bearing  a  False  Indication  of  Origin. 

The  Portuguese  law  appears  to  provide  for  the  seizure  of 
goods  bearing  false  indications  of  origin,  whether  the  goods  are 
thus  marked  before  or  after  importation — in  either  case  on  the 
petition  of  an  interested  party.  The  enforcement  of  the  law, 
so  far  as  false  indications  of  origin  are  concerned,  seems  to  be 
of  very  rare  occurrence.  Traders,  if  aggrieved,  could  prosecute. 
Foreign  governments,  through  their  representatives,  could  press 
for  the  enforcement  of  the  law  only  while  the  case  is  within 
the  jurisdiction  of  the  Customs  and  before  it  reaches  the  Courts. 
The  cost  of  an  action  brought  by  a  trader  might  be  between  £30 
and  £100.  No  official  steps  are  taken  to  prevent  the  importation 
of  goods  bearing  a  false  indication  of  origin,  but  it  would  be 
the  duty  of  a  Customs  Officer  who  noticed  the  case  to  report  and 
await  orders  before  passing  the  goods.  There  is  no  obligation 
to  mark  imported  goods  to  show  the  country  or  place  of  origin, 
or  to  denote  that  they  are  foreign. 

Marking  Goods:     "Marca  Registrada." 

Decisions. 

The  Denver  Chemical  Mfg.  Co.,  of  Denver,  Colorado,  had 
applied  for  the  registration  in  Portugal  of  the  trade  mark  "An- 
tiphlogistine"  for  a  medicinal  preparation  for  the  treatment  of 
inflammation.  The  mark  was  refused  upon  the  ground  that  it 
was  descriptive.  An  appeal  having  been  taken  to  the  court  from 
the  decision  of  the.  Registrar,  it  was  held  that  in  view  of  the  com- 
mon use  in  medicine  of  the  term  "Antiphlogistic,"  the  mark 
could  not  be  considered  an  arbitrary  or  fanciful  one,  and  that 
registration  was  properly  denied. 

Another  application  for  the  registration  of  the  trade  mark 
"No.  3"  as  a  mark  for  wine  was  also  refused  upon  the  ground 
that  the  mark  was  not  such  as  would  serve  to  differentiate  the 
products  to  which  it  was  applied  from  others  of  the  same  kind, 
or  distinguish  the  origin  thereof,  and  that  it  was  not,  therefore, 
properly  a  trade  mark  within  the  meaning  of  the  Portuguese 
law. 

An  application  being  made  for  the  registration  of  the  word 
"Lagrama"  (tear)  as  a  trade  mark  for  wine,  opposition  was 
made  by  another  party  upon  the  ground  that  the  word  was  not 
an  arbitrary  or  fanciful  term,  but  a  generic  term  of  a  certain 
kind  of  grape  very  much  used  and  very  well  known.  Opposi- 
tion was  also  filed  by  a  third  party,  who  claimed  conflict  with  his 
previous  registration  "Lagrama  de  Moca."  The  decision  refus- 
ing to  register  the  mark  was  sustained  upon  the  ground  that 


PORTUGUESE  COLONIES  433 

the  word  without  the  aid  of  any  additional  restrictive  term,  was 
not  distinctive  and,  therefore,  not  registrable  for  the  reasons 
alleged.  (Boletim  da  la  Prop.  Ind.,  1910,  pp.  215,  216.) 


PORTUGUESE  COLONIES 

PORTUGUESE   SOUTHWEST   AFRICA 
ANGOLA 

Angola  is  a  large  province  in  southwest  Africa,  the  coast  line 
of  Angola  having  an  extent  of  989  miles  (4°  40'  to  17°  20'  S.) 
It  has  an  area  of  about  500,000  square  miles  and  a  population 
estimated  at  19,403,000  (which  is  probably  largely  excessive)  ; 
the  population  of  the  five  districts,  Loanda,  Benguella,  Congo, 
Lunda  and  Alossamedes,  was,  in  1911,  about  790,000  (10,800 
whites).  It  is  divided  for  the  purposes  of  government  into 
six  districts :  Loanda,  Benguella,  Lunda,  Hulla,  Mossamedes 
and  Congo;  the  last  named  being  the  part  which  lies  within  the 
conventional  basin  of  the  Congo,  and  of  which  the  chief  town  is 
Cabinda,  situated  in  a  patch  of  Portugese  territory  a  little  to 
the  north  of  the  great  river. 

Ports:  Taken  in  order  from  this  extremity  of  the  province, 
the  ports  of  Angola  are  Landana,  Cabinda,  St.  Antonio  do 
Zaire  (St.  Antonio  on  the  Congo),  Quinzao,  Mucula,  Ambrizette, 
Mussera,  Kinsembo,  Ambriz,  Loanda  (the  capital),  Novo  Re- 
dondo,  Benguella,  Mossamedes  and  Porto  Alexandre. 


PORTUGUESE  NORTHWEST  AFRICA 
GUINEA 

Portuguese  Guinea  comprises  the  possessions  of  Portugal  in 
Senegambia.  Its  area  is  about  13,000  square  miles  and  the  pop- 
ulation about  -825,000  inhabitants. 

SAN  THOME  AND  PRINCIPE 

The  Portuguese  ultramarine  province  of  San  Thome  and 
Principe  consists  of  two  fertile  islands  near  the  coast  of  Guinea. 
The  area  is  360  square  miles  and  the  population  is  about  46,200. 
These  islands  produce  coffee,  cacao  and  quina  (which  are  the 
chief  articles  of  export),  palm  kernels,  copra  and  chinchona. 
San  Thome  is  the  capital  of  these  islands. 

CAPE  VERDE  ISLANDS 

Cape  Verde  Islands,  on  the  west  coast  of  Africa,  has  a  popu- 
lation estimated  at  about  150,000  inhabitants;  it  is  an  archi- 

28 


434  PORTUGUESE  COLONIES 

pelago  of  a  number  of  small  islands,  which  are  divided  in  two 
groups;  that  of  Barlavento  comprising  the  islands  of  S.  Antao, 
St.  Vincent,  Santa  Luzia,  St.  Nicolas,  Boa  Vista  and  Sal ;  and 
that  of  Sotavento  comprising  St.  Thiago,  Fogo,  Brava  and  Maio. 
The  area  of  the  whole  is  about  1,480  square  miles.  The  most 
important  and  productive  islands  are  those  of  St.  Thiago,  S. 
Antao,  Fogo,  Brava  and  St.  Nicolas. 


PORTUGUESE  EAST  AFRICA 

Portuguese  East  Africa  consists  of  territories  administered  by 
the  State,  five  in  number,  Lourenco  Marques,  Tete,  Mozambique, 
Inhambane  and  Quilimane,  and  also  territories  administered  by 
the  Nyassa  and  Mozambique  Companies  under  royal  charters. 
Lourenco  Marques  is  the  capital  of  the  province.  The  chief 
products  are  rubber,  sugar,  cocoanuts  and  beeswax.  Gold  has 
also  been  discovered  and  there  are  coal  deposits  in  the  Tete  dis- 
trict. The  Delagoa  Bay  railway  connects  the  port  of  Lourenco 
Marques  with  Pretoria  in  the  Transvaal,  and  has  a  length  of 
about  350  miles.  Beira  is  also  connected  by  railway  with 
Buluwayo  in  Rhodesia. 


PORTUGUESE  POSSESSIONS  IN  ASIA  AND  OCEANIA 

INDIA 

Portuguese  India  has  an  area  of  3,502  kilometers  and  a  pop- 
ulation of  about  480,000  inhabitants.  It  comprises  five  impor- 
tant islands:  Goa,  Chorao,  Divar  or  Piedade,  Combarjua  or  S. 
Braz  and  Ina  or  S.  Estevao.  The  most  important  are  Goa  and 
Mormugao.  The  chief  imports  consist  of  cotton  goods,  grain, 
sugar,  wines  and  spirits  and  metals.  The  chief  exports  consist 
of  cocoanuts  and  other  fruits,  manganese  ore,  salt  and  betel 
nuts.  The  commerce  is  very  unimportant.  There  is  communi- 
cation with  both  the  ports  by  steamers,  the  former  port  only 
being  visited  during  the  period  from  about  the  middle  of  Sep- 
tember to  the  end  of  the  following  May,  and  the  latter  port  all 
the  year  round.  The  port  of  Mormugao  is  also  connected  with 
the  British  districts  of  the  southern  Maratha  country  by  rail. 
Import  cargoes  are  mostly  landed  at  the  port  of  Mormugao  for 
transit  by  rail  to  the  inland  British  Indian  districts. 

MACAO  AND  TIMOR 

Macao  is  a  part  of  the  island  of  Hsiang  Shan ;  its  area  is  45 
square  kilometers.  The  population  is  estimated  at  65,000. 

The  trade  of  Macao  is  not  very  considerable  and  is,  as  far  as 
the  imports  are  concerned,  mostly  in  the  hands  of  the  Chinese 
and  Indians;  the  Portuguese  do  very  little  business  themselves. 


PORTUGUESE  COLONIES  435 

Laws. 

•  By  the  terms  of  the  Decree  of  December  17,  1903,  and  the 
Rules  of  April  21,  1904,  it  is  now  practicable  to  secure  protec- 
tion for  trade  marks  in  the  Colonies  of  Portugal.  These  colo- 
nies may  be  enumerated  as  follows :  Cape  Verde,  Guinea,  St. 
Thomas  and  Prince's  Island,  Angola,  Mozambique  (East  Coast 
of  Africa),  Portuguese  India,  Macau,  Timor,  Mozambique  Com- 
pany's Territory  and  Nyassa  Company's  Territory. 

What  Can  Be  Registered. 

A  mark  must  first  be  registered  in  Portugal  and  may  then  be 
registered  in  any  one  or  more  of  the  Colonies.  A  separate  reg- 
istration is  required  for  each  separate  Colonial  Division. 

Mode  of  Application. 

The  application  for  the  endorsement  of  protection  for  a  mark 
in  any  of  the  Provinces,  Districts  or  Territories  mentioned  must 
be  made  by  means  of  a  petition,  written  in  Portuguese  (Form 
E),  and  accompanied  by  the  following  documents: 

(a)  A  Diploma  of  the  Registration  for  the  Kingdom  and 
the  adjacent  islands,  and  as  many  certificates  of  such  Registra- 
tion as  is  the  number  of  Provinces,  Districts  and  Territories  in 
which  protection  is  applied  for; 

(b)  A  receipt  (Form  C)  for  the  respective  tax  paid  to  the 
Bank  of  Portugal; 

(c)  As  many  blocks  for  the  typographical  reproduction  of 
the  marks  as  is  the  number  of  Provinces,  Districts  and  Terri- 
tories in  which  protection  is  sought ; 

(d)  A  Power  of  Attorney  in  favor  of  the  person  filing  the 
petition,  when  such  person  is  not  the  owner  of  the  mark,  or  an 
Official  Agent  for  Trade  Marks   acting  in  the  name  of  said 
owner.     (Art.  34.) 

Clause  1.  The  petitions  shall  be  signed  by  the  owners  of  the 
marks,  or  by  their  legitimate  representatives. 

Clause  2.  The  signatures  of  the  petitions  and  of  the  powers 
of  attorney  shall  be  duly  attested  by  notaries  having  offices  in 
Lisbon,  or  by  the  Portuguese  Consular  Agents  abroad,  and  the 
signatures  of  the  latter  shall  be  attested  by  the  Foreign  Office. 

Clause  3.  When  the  applications  are  filed  by  Official  Agents 
for  trade  marks,  the  documents  which  must  accompany  the  pe- 
titions are  those  mentioned  in  Sub-Clauses  (a),  (fc)  and  (c). 


436  PORTUGUESE  COLONIES 

Clause  4.  The  blocks  treated  of  in  Sub-Clause  (c)  may  be 
made  of  wood,  zinc  or  any  other  substance  suitable  for  printing 
with  ordinary  type.  None  of  the  superficial  dimensions  of  the 
blocks  shall  be  less  than  15  millimeters  nor  more  than  100  milli- 
meters and  the  thickness  must  be  24  millimeters. 

The  first  application  for  a  Certificate  of  Registration  must  be 
accompanied  by  a  block  for  the  typographical  reproduction  of 
the  mark.  (Art.  35.) 

The  application  for  the  registration  of  the  transfer  or  assign- 
ment of  a  mark  shall  be  made  in  a  petition  (Form  F)  setting 
forth : 

(a)  The  Christian  name,  surname,  profession  and  domicile 
of  the  transferor  or  assignor  ; 

(b)  The  number  and  the  class  of  the  mark; 

(c)  Nature   and   date   of   the   document   which   proves   the 
transfer.     (Art  36.) 

Clause  1.  This  petition  shall  be  accompanied  by  the  Certifi- 
cate of  the  Registration  of  the  mark  in  the  Kingdom  and  the 
adjacent  islands,  by  the  document  proving  the  transfer,  by  the 
power  of  attorney  in  favor  of  the  person  filing  the  application, 
when  such  person  is  not  the  owner  of  the  mark,  and  by  the 
receipt  for  the  corresponding  tax  deposited  at  the  Bank  of 
Portugal. 

In  the  same  petition  the  endorsement  of  protection  may  not 
be  asked  for  more  than  one  mark,  for  more  than  one  of  the 
Provinces,  Districts  or  Territories  mentioned,  for  more  than  one 
transfer,  or  for  more  than  one  class  of  goods.  (Art.  37.) 

Applications  for  an  endorsement  of  protection  in  the  Portu- 
guese Colonies  shall  be  made  for  the  period  of  time  still  wanting 
to  complete  that  for  which  registration  was  granted  for  the 
Kingdom  and  the  adjacent  islands.  (Art.  38.) 

Applications  for  the  renewal  of  the  protection  of  marks  in 
the  Portuguese  Colonies  shall  be  accompanied  by  the  receipt 
for  the  corresponding  tax  deposited  at  the  Bank  of  Portugal. 
(Art.  39.) 

Grants. 

Clause  1.  Notice  of  all  such  allowals  shall  be  published  in 
the  Boletim  da  Propriedade  Industrial  and  in  the  Boletim  Offi- 
cial of  the  Province,  District  or  Territory  for  which  protection 
has  been  granted. 

Assignments. 

When,  in  a  contract  for  the  conveyance  of  an  Industrial  or 
Commercial  Establishment,  there  is  no  stipulation  to  the  con- 


RHODESIA  437 

trary,  it  shall  be  understood  that  the  mark  or  marks  accom- 
pany the  establishment  the  goods  produced  by  which  are  marked 
therewith.  (Art.  44.) 

Lapsing  and  Cancellation. 

Protection  of  marks  lapses  in  the  Portuguese  Colonies : 

1.  When   it   has   lapsed   in   the    Kingdom   and   the   adjacent 
islands. 

2.  When  the  application  for  the  renewal  has  not  been  filed, 
together  with  the  application  for  the  renewal  of  the  registration, 
in  the  Kingdom  and  the  adjacent  islands.     (Art.  45.) 

Protection  granted  to  marks  in  the  Portuguese  Colonies  will 
become  null  and  void  when  the  registrations  in  the  Kingdom  and 
the  adjacent  islands  are  cancelled.  (Art.  46.) 

Fees. 

The  taxes  relating  to  the  protection  of  marks  in  the  Portu- 
guese Colonies  are: 

For  the  protection  of  one  mark  in  each  Province,  District  or 
Territory,  2,500  reis ; 

For  the  endorsement  of  a  transfer,  for  each  Province,  Dis- 
trict or  Territory,  2,500  reis; 

For  the  endorsement  of  a  renewal  of  registration,  for  each 
Province,  District  or  Territory,  2,500  reis; 

Each  Certificate  of  Registration,  1  milreis. 

The  order  for  depositing  these  taxes  at  the  cashier's  office  at 
the  Bank  of  Portugal  shall  be  signed  by  the  interested  party, 
on  a  printed  form  supplied  by  the  Department  of  Industrial 
Property.  (Art.  47.) 


RHODESIA 

i 

British  South  Africa  (Rhodesia)  may  be  said  to  include  all 
the  region  to  the  north  and  west  of  the  Transvaal  to  the  22nd 
degree  of  south  latitude,  and  the  region  to  the  east  and  west 
bounded  by  the  Portuguese  and  German  territories,  and  em- 
braces the  important  territories  known  as  Matabeleland  and 
Mashonaland,  and  has  an  area  of  about  750,000  square  miles. 
The  country  is  very  rich  in  minerals,  especially  gold.  The 
principal  towns  are  Bulawayo,  Gwelo,  Salisbury,  Umtali  and 
Victoria.  By  the  new  railway  from  Cape  Town  to  the  north, 
which  is  completed  to  about  380  miles  north  of  Victoria  Falls, 
access  is  given  to  the  Natal  system  of  railways  via  the  Transvaal. 

MONEY,  WEIGHTS  AND  MEASURES — Same  as  Great  Britain. 


438  RHODESIA 

Law. 
Law  No.  GO  of  April  28,  1897. 

Duration. 

Fourteen  years;  renewable. 

At  a  time  not  being  less  than  two  months  nor  more  than  three 
months  before  the  expiration  of  fourteen  years  from  the  date 
of  the  registrations  of  a  trade  mark,  the  Registrar  of  Deeds 
shall  send  notice  to  the  registered  proprietor  that  the  trade 
mark  will  be  removed  from  the  register  unless  the  prescribed 
fee  for  the  continuance  of  the  mark  be  paid  before  the  expiration 
of  such  fourteen  years. 

What  May  Be  Registered. 

A  name  of  an  individual  or  firm  printed,  impressed,  or  woven 
in  some  particular  and  distinctive  manner ;  or 

A  written  signature  or  copy  of  a  written  signature  of  the 
individual  or  firm  applying  for  registration  thereof  as  a  trade 
mark;  or 

A  distinctive  mark,  device,  brand,  heading,  label  or  ticket;  or 

An  invented  word  or  invented  words;  or 

A  word  or  words  having  no  reference  to  the  character  or 
quality  of  the  goods,  and  not  being  a  geographical  name. 

There  may  be  added  to  any  one  or  more  of  these  particulars 
any  letters,  words  or  figures,  or  combination  of  letters,  words 
or  figures,  or  any  of  them ;  but  the  applicant  for  registration  of 
any  such  additional  matter  must  state  in  his  application  the 
essential  particulars  of  the  trade  mark  and  must  disclaim  in  his 
application  any  right  to  the  exclusive  use  of  the  added  matter. 
Provided  as  follows: 

1.  A  person  need  not  under  this   section  disclaim  his  own 
name  or  the  foreign  equivalent  thereof  or  his  place  of  business, 
but  no  entry  of  any  such  name  shall  affect  the  right  of  any 
owner  of  the  same  name  to  use  that  name  or  the  foreign  equivalent 
thereof. 

2.  Any  special  and  distinctive  word  or  words,  letter,  figure 
or  combination  of  letters  or  figures,  or  of  letters  and  figures, 
used  as  a  trade  mark  before  the  eighth  day  of  August,  1877,  may 
be  registered  as  a  trade  mark  under  the  said  Act. 

Mode  of  Application. 

Every  application  for  the  registration  of  a  trade  mark  shall 
be  in  the  following  form : 

To  the  Registrar  of  Deeds,  Salisbury : 

I  (here  insert  full  name  and  description  of  applicant)  hereby 
apply  for  the  registration  of  the  following  trade  mark  of  which 


RHODESIA  439 

a  representation  is  contained  in  the  paper  hereto  annexed,  namely : 
(here  insert  in  writing  a  description  of  the  trade  mark).  I  de- 
sire that  the  said  trade  mark  may  be  registered  in  respect  of 
(here  insert  description  of  the  goods  and  the  class  or  classes 
under  which  the  applicant  desires  to  have  them  registered),  in 
the  name  of  (here  insert  the  full  name,  address  and  business  of 
the  individual,  firm,  or  company;  in  the  case  of  an  individual 
add  trading  style,  if  any). 

Dated  at  this  day  of 

(Signed) 

(To  be  signed  by  the  applicant,  or  in  the  case  of  a  firm,  by  a 
partner,  adding  "a.  member  of  the  firm,"  or  in  the  case  of  a 
company,  by  the  secretary  or  other  principal  officer,  adding  "for 
the  company.") 

The  application  shall  be  accompanied  by  a  solemn  declaration 
to  the  following  effect: 

I  (here  insert  full  name  and  description),  do  solemnly  and 
sincerely  declare  that  I  am  lawfully  entitled  to  the  use  of  the 
trade  mark  described  in  the  application  hereto  annexed  marked 
"A,"  which  is  signed  by  me,  and  is  shown  to  me  at  the  time 
of  making  this  declaration.  And  I  make  this  declaration  con- 
scientiously believing  the  same  to  be  true. 

Declared  at  this  day  of 

Before  me 

The  declaration  if  made  within  the  territories  of  the  British 
South  Africa  Colony  shall  be  attested  to  by  a  Justice  of  the 
Peace;  if  made  elsewhere  within  Her  Majesty's  Dominions,  by 
a  Justice  of  the  Peace  or  Mayor,  and  if  made  out  of  Her  Maj- 
esty's Dominions,  by  a  British  Consular  Officer  or  by  a  Magis- 
trate, Justice  of  the  Peace  or  Mayor  (whose  signature  shall  be 
authenticated  by  a  State  Secretary,  Consular  Officer,  or  by  the 
Consular  representative  in  London,  of  the  country  in  which 
the  declaration  was  made),  or  by  a  Commissioner  of  the  Supreme 
Court  of  the  Cape  of  Good  Hope,  or  of  the  High  Court  of 
Matabeleland  appointed  to  administer  oaths. 

Any  person  desiring  to  register  a  trade  mark  shall  advertise 
his  intention  so  to  do  once  a  week  during  two  consecutive  weeks 
in  the  Gazette  and  once  a  week  during  two  consecutive  weeks  in 
a  Rhodesian  paper  to  be  approved  of  by  the  Registrar  of  Deeds. 

The  advertisement  shall  be  in  the  following  terms: 

Trade  Marks  Registration. 
(Here  give  a  clear  representation  of  the  trade  mark.) 

I  hereby  give  notice  that  I  intend  on  and  after  the 
day  of  18       ,  to  apply  to  the  Registrar  of 

Deeds  to  be  registered  as  the  proprietor  of  the  trade  mark  repre- 


440  RHODESIA 

sented  above,  this  day  lodged  and  deposited  by  me  in  the  office 
of  the  said  Registrar  of  Deeds  in  for  inspection; 

and  I  desire  that  the  said  trade  mark  shall  be  registered  in  re- 
spect of  the  following  description  of  goods,  that  is  to  say  (here 
insert  class  and  description  of  goods.) 

Dated  at  this  day  of  18 

(Signature  of  applicant  or  his  agent.) 

At  least  thirty  days  must  lapse  between  the  date  of  the  last 
advertisement  of  the  application  and  the  date  on  which  applica- 
tion is  made  for  the  registration  of  the  trade  mark. 

Subject  to  any  other  directions  that  may  be  given  by  the  Reg- 
istrar, all  applications,  notices,  representations  of  marks,  papers 
having  representations  affixed  or  other  documents  filed  with 
the  Registrar  in  connection  with  the  registration  of  trade  marks 
must  be  written  on  durable  paper,  having  on  the  left  hand  side  a 
margin  of  not  less  than  two  inches. 

Subject  to  any  other  directions  that  may  be  given  by  the  Reg- 
istrar, every  application  for  registration  must  be  accompanied  by 
three  plain  and  distinct  representations  of  the  trade  mark.  If 
the  mark  is  to  be  registered  in  more  than  one  class  then  two 
additional  representations  for  each  class  after  the  first  shall  be 
supplied. 

Whenever  a  mark  consists  of  or  includes  words  printed  in 
other  than  Roman  characters,  there  shall  be  given  at  the  foot 
of  each  representation  a  "translation  of  such  words  signed  by  the 
applicant  or  his  agent. 

At  the  time  of  application  for  the  registration  of  a  mark  the 
applicant  shall  lodge  with  the  Registrar  of  Deeds  copies  of  the 
newspaper  in  which  his  application  appeared,  and  shall  acquaint 
him  with  the  dates  of  the  Gazette  in  which  it  was  published, 
and  shall  also  lodge  a  form  of  certificate  of  registration  having 
printed  thereon  a  representation  of  the  mark  which  it  is  his  de- 
sire to  register.  Forms  of  such  certificates  shall  be  supplied  by 
the  Registrar  of  Deeds  free  of  charge. 

Any  person  objecting  to  the  registration  of  a  trade  mark  must 
give  notice  in  duplicate  (signed  by  himself,  or  his  solicitor)  to 
the  Registrar  of  Deeds  before  the  expiration  of  thirty  days  after 
the  last  advertisement  of  the  application.  Such  person  shall 
state  the  grounds  of  his  objection,  and  shall  before  the  expira- 
tion of  thirty  days  or  such  further  time  as  the  Registrar  of 
Deeds  may  allow  after  the  date  of  lodging  his  objection,  proceed 
to  have  the  application  set  aside  by  some  competent  court,  fail- 
ing which  the  opposition  shall  be  deemed  to  be  abandoned. 

Where  registration  of  a  trade  mark  has  not  been  or  shall 
not  be  completed  within  three  months  from  the  date  upon  which 
the  application  is  received  by  the  Registrar  of  Deeds  by  reason 
of  default  on  the  part  of  the  applicant,  the  application  shall  be 


ROUMANIA  441 

deemed  to  be  abandoned;  provided  that  with  regard  to  applica- 
tions already  lodged  the  three  months  shall  be  reckoned  from 
the  date  of  publication  of  this  rule. 

Assignment. 

The  right  to  the  use  of  a  trade  mark  is  assignable  by  an 
instrument  in  writing,  and  such  assignment  of  a  trade  mark 
shall  be  recorded  in  the  Deeds  Office  within  three  months  of  the 
date  of  its  execution,  after  the  expiration  of  which  period  it 
will  not  be  received  unless  upon  the  order  of  some  competent 
court  or  judge.  The  assignment  shall  be  signed  by  the  regis- 
tered proprietor  or  by  his  lawful  representative,  whose  signa- 
tures shall  be  authenticated  in  the  manner  provided  by  No.  5  of 
these  rules,  with  regard  to  the  attestations  of  declarations,  and 
shall  contain  full  particulars  of  registration  and  assignment,  as 
also  the  name,  address  and  calling  of  the  person,  firm  or  com- 
pany to  whom  the  mark  is  assigned.  The  certificate  of  registra- 
tion shall  be  produced  for  endorsement  of  such  assignment.  If 
it  has  been  lost  or  destroyed  a  declaration  setting  forth  fully 
the  circumstances  of  such  loss  or  destruction  made  by  the  reg- 
istered proprietor  and  attested  in  the  manner  prescribed  by  No. 
5  of  these  rules  shall  be  lodged  with  the  Registrar  of  Deeds. 

Classification. 

Same  as  in  Cape  Colony. 

Marking  Goods:     "Registered  Trade  Mark." 


ROUMANIA 

The  kingdom  of  Roumania  comprises  about  50,000  square 
miles  and  the  population  in  1911  was  estimated  to  be  6,590,000. 

The  soil  of  the  country  is  remarkably  rich  and  minerals  and 
precious  metals  are  said  to  be  abundant,  but  are  not  worked. 
Petroleum  and  coal  are  raised  to  an  increasing  extent. 

The  industry  of  Roumania  being  chiefly  agricultural,  the  ex- 
ports are  principally  wheat,  rye,  barley,  oats,  maize,  bran,  alco- 
hol, timber,  petroleum,  etc.,  while  the  imports  consist  chiefly  of 
southern  fruits  and  colonial  produce ;  chemicals  and  chemical 
products ;  leather,  furs  and  manufactures  thereof ;  textiles,  etc. ; 
machinery,  sheet  iron,  etc. 

MONEY — The  Leu  of  100  centimes  or  bani=9*/2d.=19  cents 
United  States. 

WEIGHTS  AND  MEASURES — The  metric  svstem. 


442  ROU  MANIA 

Law. 
Laws,  May  28,  1879.     Promulgated  May  30,  1879. 

Duration. 

The  duration  of  a  trade  mark  is  fifteen  years.  A  prolonga- 
tion may,  however,  be  obtained  for  another  term  of  fifteen  years 
if  the  application  for  renewal  is  filed  previous  to  the  expiration 
of  the  first  term.  (Art.  8.) 

What  May  Be  Registered. 

Proper  subjects  for  consideration  as  trade  marks  are  the 
different  signs  which  serve  to  distinguish  the  products  of  a 
manufacturer,  such  as  names  under  a  special  form,  titles,  stamps, 
impressions,  seals,  reliefs,  figures,  etc.  (Art.  1.) 

Those  which  are  not  suitable  are:  letters  or  monograms,  and 
the  arms  of  a  country  or  state  which  the  inhabitants  place  upon 
their  products.  (Art.  2.) 

Who  May  Apply. 

Foreigners  owning  in  Roumania  manufacturing  or  commer- 
cial establishments  are  entitled  to  the  benefits  accorded  by  this 
law  upon  compliance  with  the  prescribed  formalities.  (Art.  10.) 

Those  Roumanians  also  who  are  non-residents,  whose  manu- 
facturing or  commercial  establishments  are  situated  outside  of 
Roumania  receive  the  benefits  accorded  by  this  law  for  their 
products  if  by  treaty  with  the  countries  where  such  establish- 
ments are  located,  reciprocity  is  afforded  for  Roumanian  trade 
marks.  In  this  case  the  trade  marks  of  foreigners  should  be  de- 
posited with  the  Registrar  of  the  Tribunal  of  Commerce  for  the 
district  of  Illfov.  (Art/ 11.) 

Mode  of  Application. 

Applications  for  trade  marks  made  by  manufacturers,  mer- 
chants, or  agriculturists  to  the  Registrar  of  the  Tribunal  of 
Commerce  in  their  District,  or  in  default  of  there  being  a  Tri- 
bunal of  Commerce  to  the  Civil  Tribunal,  in  order  to  receive  the 
benefit  resulting  from  the  law  of  April  15,  1879,  are  subject  to 
the  following  regulations.  (Art.  1). 

The  application  must  be  made  by  the  interested  parties  them- 
selves or  by  their  duly  authorized  agent. 

The  complete  power  may  be  made  under  private  signature, 
but  must  be  duly  registered  and  should  be  deposited  with  the 
Registrar. 


ROUMANIA  443 

The  model  to  be  deposited  consists  of  two  copies  of  the  mark 
on  paper,  being  a  drawing,  engraving  or  an  imprint  representing 
the  mark  adopted.  The  paper  to  form  a  square  eighteen  centi- 
meters on  each  side,  the  mark  to  be  placed  in  the  center  of  the 
same.  (Art.  2.) 

If  the  trade  mark  is  graved  or  stamped  in  relief  upon  the 
articles,  and  these  articles  do  not  exceed  the  size  of  the  paper, 
the  applicant  may  deposit  two  samples  thereof  with  either  one 
or  more  figures  of  detail  or  an  explanatory  statement  of  the 
trade  mark. 

These  modifications  must  be  made  on  the  left  hand  side  of  the 
paper  on  which  the  trade  mark  is  represented,  the  right  side  of 
the  paper  being  reserved  for  the  particulars  prescribed  by  Arti- 
cle 5,  in.  conformity  to  the  model  given  by  the  present  decree. 
(Art.  3.) 

One  of  these  samples  of  the  trade  mark  is  attached  to  one  of 
the  leaves  of  a  register  kept  for  that  purpose,  and  in  the  order 
of  their  presentation;  the  other  is  to  be  returned  to  the  mer- 
chant, manufacturer,  or  agriculturist,  with  the  legalization  of  the 
Tribunal. 

The  register  is  to  be  of  paper  twenty-four  centimeters  wide  by 
forty  centimeters  high  and  is  to  be  duly  signed  by  the  President 
of  the  Tribunal  of  Commerce  or  of  the  Civil  Tribunal,  as  the 
case  may  be.  (Art.  4.) 

The  Registrar  draws  up  the  process  for  each  application,  either 
in  the  order  of  its  presentation  in  a  register  duly  signed,  or  as 
had  been  stated  in  the  preceding  article. 

This  process  should  mention: 

1.  The  day  and  hour  of  filing  the  application. 

2.  The   name  of   the  proprietor  of   the   mark  and   that   of 
his  attorney. 

3.  The  occupation  and  residence  of  the  proprietor  and  the 
particular  object  to  which  he  proposes  to  apply  the  mark. 

Each  process  should  be  numbered  in  its  order  and  this  num- 
ber is  also  inscribed  on  the  two  models  with  the  name,  residence 
and  profession  of  the  proprietor,  the  place  and  time  of  deposit, 
and  the  especial  application  for  which  it  is  intended. 

When  after  the  expiration  of  fifteen  years,  the  proprietor  of 
a  mark  renews  his  application,  this  circumstance  must  be  men- 
tioned on  the  models  and  also  in  the  process. 

The  process  before  referred  to  is  signed  by  the  Registrar  and 
the  applicant  or  his  attorney. 

A  copy  of  the  process  is  given  to  the  applicant.     (Art.  5.) 

Requirements. 

Power  of  attorney,  legalized  by  Roumanian  Consul ;  two  fac- 
similes of  the  mark;  statement  of  the  goods  to  which  the  mark 
belongs;  one  electrotype. 


444  ROUMANIA 

Assignment. 

The  property  of  a  merchant  or  manufacturer  in  a  trade  mark 
ceases  at  the  same  time  as  the  sale  or  manufacture  of  the  article 
for  which  it  was  adopted.  Trade  marks  are  at  all  times  assign- 
able. In  case  of  the  assignment  of  a  trade  mark  the  assignee 
must,  within  three  months  apply  for  a  copy  under  his  name, 
otherwise  the  property  in  the  trade  mark  ceases,  the  copy  not 
having  been  made.  (Art.  5.) 

Infringement  and  Penalties. 

A  fine  of  from  50  to  2,500  francs  and  imprisonment  from 
three  months  to  three  years,  or  either  of  these  penalties  may 
be  imposed  as  follows: 

1.  On  those  who  counterfeit  a  trade  mark  or  who  use  a 
counterfeit  trade  mark. 

2.  On  those  who  fraudulently  apply  to  their  articles  of  man- 
ufacture or  commerce  a  trade  mark  belonging  to  others. 

3.  On  those  who  have  knowingly   sold   or  have  taken   for 
sale  one  or  more  products  bearing  a  fraudulent  mark.     (Art. 
12.) 

A  fine  of  from  50  to  1,500  francs  and  imprisonment  from 
one  month  to  one  year,  or  either  of  these  two  penalties  may  be 
imposed  as  follows: 

1.  On   those   who   while   not  having   counterfeited    a   trade 
mark,  have  imitated  in  a  fraudulent  manner  the  make  of  the 
article  so  as  to  deceive  the  purchaser  or  who  have  employed  a 
fraudulent  imitation  of  the  trade  mark. 

2.  On  those  who  employ  a  trade  mark  calculated  to  deceive 
the  purchaser  as  to  the  nature  of  the  product. 

3.  Those  who  have  knowingly  sold  or  taken  for  sale,  one 
or  more  products  bearing  the  fraudulent  imitation  of  a  trade 
mark,  being  calculated 'to  deceive  the  purchaser  as  to  the  nature 
of  the  product.     (Art.  13.) 

A  fine  of  from  50  to  1,000  francs  and  imprisonment  of  from 
fifteen  days  to  six  months  or  either  one  of  these  penalties  may 
be  imposed  as  follows: 

1.  On  those  who  have  failed  to  place  upon  their  products 
a  trade  mark  which  has  been  declared  obligatory. 

2.  On  those  who  have  sold  or  offered  for  sale  one  or  more 
products  not  bearing  a  mark  which  has  been  declared  obligatory 
for  that  class  of  articles. 

3.  On  those  who  have  failed  to  observe  the  provisions  of 
the  decision  rendered  in  support  of  article  3  of  the  present  law. 
(Art.  14.) 

The  penalties  instituted  by  the  present  law  may  not  be  in- 
creased, but  the  highest  penalty  should  be  imposed  for  all  the 


ROUMANIA  445 

violations   anterior   to  the  first  prosecution   thereunder.      (Art. 
15.) 

The  penalties  prescribed  by  articles  12,  13,  and  14  may  be 
doubled  in  case  of  a  second  offense.  There  shall  be  a  second 
offense  within  the  meaning  of  the  law  when  within  the  five 
years  preceding-,  a  conviction  of  one  of  the  offenses  provided 
for  in  this  law  shall  have  been  pronounced  against  an  offender. 
(Art.  16.) 

Article  60  of  the  Penal  Code  is  applicable  to  offenses  under 
the  present  law.  (Art.  17.) 

Persons  convicted  may  be  deprived  for  a  period  not  exceeding 
ten  years  of  the  privileges  of  taking  part  in  the  elections  for 
the  Chamber  of  Commerce  and  other  public  institutions  of  an 
industrial  or  commercial  nature. 

At  the  same  time  the  Tribunal  may  order  the  posting  of  the 
judgment  in  such  places  as  it  may  designate  and  also  its  inser- 
tion in  whole  or  in  part  in  such  journals  as  may  be  determined 
upon,  such  publication  to  be  at  the  cost  of  the  offender.  (Art. 
18.) 

The  Tribunal  may  order  the  confiscation  or  the  destruction, 
not  only  of  the  articles  upon  which  a  trade  mark  contrary  to  the 
provisions  of  Articles  12  and  13  is  recognized,  but  also  of  the 
instruments  and  utensils  employed  in  their  manufacture,  and 
this  also  in  case  of  the  acquittal  of  the  accused. 

The  Tribunal  may  order  that  the  confiscated  articles  may  be 
applied  to  the  benefit  of  the  proprietor  of  the  trade  mark  which 
has  been  counterfeited  or  fraudulently  used  in  addition  to  his 
damages  therefor,  if  he  so  elects. 

In  all  cases  the  Tribunal  will  direct  the  destruction  of  all 
trade  marks  which  are  found  to  be  in  violation  of  the  provisions 
of  Articles  12  and  13.  (Art.  19.) 

In  cases  under  paragraphs  1  and  2  of  Article  14,  the  Tri- 
bunal will  always  direct  that  the  trade  mark  declared  obligatory 
shall  be  placed  upon  those  articles  which  are  subject  to  this 
obligation. 

The  Tribunal  may  decree  confiscation  of  the  articles  if  the 
accused  within  the  five  years  preceding  has  been  convicted  of 
an  offense  in  contravention  of  the  two  first  paragraphs  of  Ar- 
ticle 14.  (Art.  20.) 

The  judgments  for  these  infractions  are  to  be  peremptory. 
(Art.  21.) 

Unfair  Competition. 

The  Trade  Mark  Law  contains  special  provisions  prohibiting 
the  use  of  false  trade  descriptions  which  cannot  be  considered 
as  -constituting  competition.  According  to  these  provisions  it 
is  prohibited  to  affix  to  foreign  goods  Roumanian  trade  marks 
or  designations  which  might  indicate  Roumanian  origin.  Such 


446  ROUMANIA 

goods  will  be  seized  by  the  Custom  House  authorities.  This 
provision  of  the  law  includes  wine,  brandy,  and  other  bever- 
ages, cattle,  flour,  fruit  and  agricultural  products.  According 
to  paragraph  336  of  the  Penal  Code,  all  persons  who  make  mis- 
leading statements,  with  fraudulent  intent,  respecting  the  qual- 
ity of  articles  of  merchandise,  shall  be  punished  by  a  fine  and 
by  imprisonment  for  a  term  of  1  to  6  months. 

Jurisdiction. 

Civil  actions  relating  to  trade  marks  are  submitted  to  the 
Tribunal  of  Commerce  and  are  adjudged  as  matters  of  urgency. 
In  case  of  a  criminal  action,  if  the  party  arraigned  should  raise 
a  question  as  to  the  legality  of  the  trade  mark,  the  Tribunal 
will  pass  upon  the  exception.  (Art.  22.) 

If  the  proprietor  of  a  trade  mark  can  prove  that  there  are 
on  sale  certain  products  to  his  prejudice  and  contrary  to  the 
provisions  of  the  present  law  he  may  proceed  by  the  public 
criers  to  publish  a  detailed  description  of  such  articles  by  virtue 
of  an  ordinance  of  the  president  of  the  Tribunal  of  Commerce, 
or  of  the  justice  of  the  peace  of  that  jurisdiction  in  case  of  the 
failure  of  the  tribunal  in  the  locality  where  the  articles  are 
found  to  take  action  in  the  matter. 

The  ordinance  requires  in  suit  a  simple  petition  and  after- 
wards a  statement  showing  that  the  trade  mark  was  duly  reg- 
istered. If  necessary,  an  expert  may  be  nominated  who  will  aid 
the  crier  in  making  his  description.  If  the  complainant  demands 
that  the  articles  shall  be  recovered  the  judge  will  require  him 
to  give  security  before  proceeding  to  effect  their  recovery.  A 
copy  of  the  ordinance  of  the  Tribunal  and  a  certificate  showing 
that  the  security  has  been  deposited  shall  be  left  with  the  pro- 
prietors of  the  articles  sought  to  be  recovered,  under  penalty 
of  a  recovery  by  damages  against  the  persons  seeking  such 
recovery.  (Art.  23.) 

In  case  the  complainant  shall  not  bring  an  action  either  civil 
or  criminal  within  twenty  days,  his  right  of  recovery  becomes 
void,  without  prejudice,  however,  to  his  right  to  obtain  an 
award  of  damages  in  an  action  before  the  criminal  courts. 

Law  in  Force  in1  Roumania  to  Prevent  the  Sale  or  Importation 
of  Goods  Bearing  a  False  Indication  of  Origin. 

The  Trade  Mark  Law  of  1879  prohibits  the  importation  of 
all  goods  bearing  false  indications  of  origin  and  renders  them 
liable  to  seizure  either  by  the  custom  authorities  or  at  the  re- 
quest of  the  public  prosecutor,  or  of  the  injured  party.  By  the 
Anglo-Roumanian  Convention  of  1893,  goods  bearing  false  in- 
dications of  origin  are  dealt  with  in  the  same  way.  The  false 
apDlication  to  goods  of  another's  registered  trade  mark  and  the 
sale  or  exposition  for  sale  of  goods  bearing  falsely-applied, 


ROUMANIA  447 

counterfeit,  or  imitated  registered  trade  marks  are  prohibited  by 
law.  Subjects  of  countries  like  Great  Britain,  which  have  con- 
cluded reciprocity  trade  mark  conventions  with  Roumania,  ob- 
tain this  trade  mark  protection.  A  civil  or  criminal  action  may 
be  brought  for  infringement  of  trade  marks  after  seizure  of 
goods.  The  probable  cost  of  the  action  would  be  from  $130 
to  $240.  No  special  steps,  except  those  already  mentioned,  are 
taken  to  prevent  importation  of  goods  bearing  a  false  indica- 
tion of  origin.  There  is  no  law  as  to  the  compulsory  marking 
of  imported  goods  with  the  name  of  the  country  of  origin,  but, 
under  the  convention  with  Great  Britain,  if  a  vender  in  Rou- 
mania puts  his  name  or  address  upon  goods  of  British  origin 
coming  into  Roumania,  they  must  also  bear  an  indication  of  the 
country  or  place  of  manufacture  or  production. 

Marking  Goods:  "Marque  deposee"  or  "Trade  Mark  Regis- 
tered" in  Roumanian  Language. 

DECISIONS. 
Trade   Mark   Infringements. 

A  decision  by  the  Commercial  Court  of  Turnu-Severin,  under 
date  of  December  27,  1907,  indicates  a  quite  advanced  condi- 
tion of  trade  mark  protection  in  Roumania.  The  plaintiff,  a 
French  firm,  had  registered  under  the  laws  of  Roumania,  the 
word  "Rigollot"  as  a  trade  mark  for  a  brand  of  medicated  paper, 
which  went  under  the  name  "Papier  Rigollot."  The  defen- 
dants, a  Roumanian  concern,  sold  at  their  pharmacy  a  similar 
paper,  the  label  of  which  bore  the  words  "Papier  dit  Rigollot," 
that  is  to  say,  "paper  called  Rigollot."  The  defendant  claimed 
that  the  mark  was  indicative  of  the  character  of  the  product, 
and  that  it  had  been  thus  used  by  him.  The  court  found,  how- 
ever, that  this  was  not  the  fact,  but  that  it  was  merely  a  fanci- 
ful term  chosen  by  the  plaintiff  to  distinguish  its  products  from 
similar  products  of  other  manufacture.  As  to  the  defendant's 
claim  that  he  could  not  be  punished  because  the  infringing  ar- 
ticles had  been  manufactured  before  the  registration  of  the 
French  mark,  the  court  said  that  the  registration  in  Roumania 
was,  in  any  event,  only  declarative  and  was  not  attributive  of 
property,  and  the  fact  that  the  infringement  dated  from  before 
the  registration,  did  not,  therefore,  deprive  the  owners  of  the 
mark  of  their  remedy  against  the  infringer;  moreover,  the  de- 
fendant having  continued  to  sell  his  preparation  since  the  regis- 
tration of  the  French  mark,  there  could  be  no  question  of  his 
liability  for  such  continued  infringement. 

The  defendant  relied  upon  the  further  ground  that  his  label 
was  in  appearance  entirely  different  from  that  of  the  plaintiff, 
but  the  court  said  that  inasmuch  as  he  had  made  use  of  the 
name  "Rigollot"  he  had  done  so  with  a  view  to  causing  it  to 


448  RUSSIA 

be  understood  that  his  product  was  the  article  known  under  that 
name,  and  therefore,  there  was  no  doubt  of  his  liability ;  that 
the  defendant  had  no  right  to  use  the  word,  in  any  manner,  so 
as  to  cause  confusion  between  his  preparation  and  that  of  the 
plaintiffs. 

Damages  were,  therefore,  awarded  to  the  plaintiffs,  who  were 
declared  entitled  to  the  exclusive  use  of  the  mark,  and  the  judg- 
ment was  directed  to  be  published  in  two  newspapers  at  the  ex- 
pense of  the  defendant.  (Darasse  &  Co.  vs.  Boemsches,  Revue 
Int.  de  La  Prop.  Ind.,  1908,  p.  16.) 


RUSSIA 

The  total  area  of  the  Russian  Empire  is  8,647,657  square 
miles  and  the  population  in  1911  was  estimated  to  be  149,- 
300,300. 

The  industry  of  Russia  is  chiefly  agricultural,  and  upon  the 
success  or  failure  of  the  crops  the  prosperity  or  otherwise  of 
the  country  mainly  depends.  Various  parts  of  the  Empire  are, 
however,  rich  in  mineral  wealth,  such  as  Siberia,  the  Ural  moun- 
tains, the  Caucasus,  etc.  But,  although  the  precious  metals,  as 
well  as  iron,  Conner,  lead,  zinc  and  coal,  exist  in  considerable 
quantities,  the  mining  industrv  is  very  slow  of  development,  in 
spite  of  the  very  heavy  import  duties  upon  all  descriptions  of 
material  imported.  Iron  and  coal  are  found  in  the  southeast, 
towards  the  Sea  of  Azoff,  and  in  Poland,  both  in  ,-ufficient  quan- 
tities and  in  sufficiently  accessible  localities  to  promise  a  steady 
industrial  development.  In  the  Ural  mountains  iron  of  excel- 
lent quality  and  various  other  minerals  are  found,  but  the  de- 
sirable corresponding  supply  of  coal  in  the  neighborhood  is 
wanting,  whilst  the  forests  are  very  much  exhausted,  and  the 
Urals  are  too  far  from  the  consuming  markets  of  the  world  to 
permit  the  expectation  of  a  rapid  development  of  mineral  in- 
dustry in  that  region.  Gold  is  found  exclusively  in  the  Urals 
and  Siberia  and  petroleum  practically  exclusively  in  the  Cau- 
casus. 

MONEY— The  rouble  (gold)=100  copeks=2s.  l-l/2d.=51 
cents  U.  S. 

WEIGHTS — Poud=40  funts=36.11  Ibs.  avoirdupois=16.380 
grammes;  Funt— 32  lot=96  solotniks=0.9028  Ibs.  avoirdupois 
=409.5  grammes. 

MEASURES — Sajene=3  arshins=7  ft.=2. 13356  meters ;  Arshin 
=16  vershoks=28  inches=0.7119  meters;  Russian  inch=Eng- 
lish  inch=0.0254  meters;  vedro=10  krouch  kas=2.707  Imp. 
gallons;=12.289  litres. 


RUSSIA  449 

Laws. 
Laws  of  February  26,  1896. 

What  May  be  Registered. 

As  trade  marks  are  considered,  as  per  Section  1,  Article  1,  of 
the  Trade  Marks  Laws:  stamps,  brands,  seals,  leads  (like 
those  at  the  Custom  House,  for  instance),  capsules,  marking 
(either  woven  or  embroidered),  all  kinds  of  labels,  vignettes, 
mottoes  and  devices,  packing  (wrappers,  etc),  drawings  of  spe- 
cial packing,  etc. 

Trade  Marks  for  articles,  etc.,  manufactured  abroad  can  be 
registered  only  in  such  a  case  in  Russia  (Finland  excepted), 
wihen  the  same  trade  marks  are  registered  in  the  country  where 
the  identical  articles  are  manufactured  and  the  works  are  sit- 
uated in  one  of  the  following  countries  or  states  with  which 
mutual  treaties  or  conventions  have  been  concluded  by  the  Em- 
pire of  Russia  to  that  effect.  Those  countries  or  states  are: 
Austria  and  Hungary,  Belgium,  Denmark,  France,  Germany, 
Great  Britain,  Italy,  the  Netherlands,  the  United  States  of  North 
America,  Servia,  Spain,  Switzerland  and  Japan. 

Word  marks  are  protected,  however,  only  under  the  restric- 
tion that  the  pictorial  appearance  of  the  word,  and  consequently 
the  kind  of  type,  but  not  the  sound  and  the  composition  of  the 
word  are  protected.  Word  marks  in  Russia  consequently  pos- 
sess only  a  secondary  value.  In  the  case  of  marks  for  medical 
preparations  the  permission  to  introduce  the  preparations  must 
be  obtained. 

Term. 

The  protection  of  a  trade  mark  can  be  applied  for,  according 
to  the  petitioner's  desire,  from  one  year  to  ten.  A  Russian  cer- 
tificate for  a  foreign  trade  mark  cannot,  however,  be  obtained 
for  a  longer  term  than  the  term  that  is  mentioned  in  the  re- 
spective certificate  of  registration  of  the  country  where  the  ar- 
ticles, etc.,  are  manufactured.  The  protection  may  be  renewed 
at  the  expiration  of  the  term  if  the  protection  of  the  mark  at 
home  and  the  respective  mutual  treaty  or  convention  above  re- 
ferred to  are  still  in  full  force. 

Application  Formalities. 

The  petition  is  for  a  period  of  registration  of  from  one  to  ten 
years,  subject  to  the  payment  of  the  corresponding  fees.  Cer- 
tificates of  Filing  are  not  given.  The  application  is  not  pub- 
lished. The  documents  are  examined  both  with  regard  to  formal 
requirements  and  also  concerning  the  subject-matter,  and  .the 

29 


45°  RUSSIA 

application  is  rejected  if  it  is  shown  that  the  mark  is  identical 
with,  or  is  capable  of  being  mistaken  for  an  older  mark  which 
has  already  been  registered.  An  alteration  of  the  mark  can 
then  possibly  be  made.  In  case  the  mark  is  novel  the  registra- 
tion is  effected,  the  Certificate  of  Registration  is  prepared,  and 
the  mark  is  published  in  the  Official  Journals.  A  registered 
mark  can  be  contested  by  Civil  Proceedings  within  three  years 
of  the  publication  and  the  registration  can  be  cancelled  on  pro- 
ducing reasons  against  the  subject-matter. 

Publication. 

The  publication  of  the  delivery  and  the  forfeiture  of  certifi- 
cates of  registration  of  trade  marks  which  have  appeared  in  the 
Messenger  before  the  publication  of  this  decree,  and  which  have 
been  made  upon  the  order  of  the  Department  of  Commerce  and 
Manufacture,  and  later  on  by  the  order  of  the  Industrial  Sec- 
tion, shall  be  considered  as  having  full  effect,  even  if  they  did 
not  contain  a  description  of  the  trade  mark.  (Decree  of  Feb- 
ruary, 1911.) 

Renewal  of  Trade  Marks. 

For  the  purpose  of  renewing  a  Trade  Mark  the  same  papers 
as  are  necessary  for  the  first  registration  of  a  mark  are  required. 


The  Assignment  of  Trade  Marks. 

The  assignment  of  Trade  Marks  can  be  effected  only  if  the 
business  of  the  former  proprietor  of  the  mark  or  a  part  of  this 
business  to  which  the  registered  mark  belongs  passes  over  simul- 
taneously to  other  persons.  The  transfer  of  the  mark  must  be 
communicated  to  the  Russian  Authorities  within  six  months  of 
the  assignment  of  the  business.  If  this  notification  is  not  made 
or  is  not  made  in  due  time,  the  protection  expires. 

Documents  Required. 

1.  A  power  in  the  Russian  language  legalized  by  a  Russian 
Consul. 

2.  Fifty  facsimiles  of  mark. 

3.  A  Certificate  of  Registration  in  the  native  country,  legal- 
ized by  a  Russian  Consul. 

4.  A  translation  of  the  same.    This  must  be  translated  either 
by  a  sworn  Russian  translator  or  must  be  certified  by  a  Russian 
Consul  as  correct. 


RUSSIA 

Laws  in  Force  in  Russia  to  Prevent  the  Sale  or  Importation  of 
Goods  Bearing  a  False  Indication  of  Origin. 

Foreign  goods  bearing  a  false  indication  of  Russian  origin, 
consisting  of  a  Russian  trade  mark  (Kleimo),  or  the  address 
of  a  Russian  manufacturer,  are  seized  by  the  customs  on  impor- 
tation. The  trade  mark  law  of  1896  apparently  (though  the 
interpretation  has  never  been  decided  by  the  courts)  prohibits 
the  application  to  goods  of  trade  marks  containing  false  indica- 
tions of  any  origin,  as  well  as  the  sale  of  such  goods.  Cases 
of  false  indications  of  non-Russian  origin  are  not  taken  up  offi- 
cially, but  if  the  interested  manufacturer  or  the  representative 
of  the  foreign  power  concerned  notified  the  authorities  of  any 
contravention  of  the  trade  mark  law,  they  would  have  to  insti- 
tute proceedings.  The  cost  of  prosecution  is  nil  except  for 
lawyer's  fees.  No  steps  are  taken  to  prevent  the  importation  of 
goods  bearing  a  false  indication  of  origin.  There  are  no  re- 
quirements as  to  the  compulsory  marking  of  imported  goods  to 
show  the  country  or  place  of  origin  or  to  denote  that  they  are 
foreign. 

Marking  Goods : 

3HAKI  SAflBJI.  OTfl.  I1POM.   38,  IB 

Protection  of  Proprietary  Remedies. 

In  the  absence  of  any  specific  law  in  Russia  against  unfair 
competition,  two  recent  orders  emanating  from  the  board  of 
health  of  Russia  have  a  peculiar  interest.  By  the  first  of  these 
orders,  Russian  apothecaries  were  given  the  right  to  make  and 
sell  imitations  of  foreign  proprietary  remedies,  under  the  names 
by  which  they  are  known  in  the  country  of  origin  and  on  the 
sole  condition  that  the  name  of  the  firm  making  the  imitation 
and  the  place  of  manufacture  be  shown  upon  the  label.  So 
many  protests  against  this  order  were  received  -from  neighbor- 
ing countries  that  it  was  somewhat  modified  by  a  later  decree, 
providing  that  hereafter  preparations  of  Russian  origin  shall  be 
distinguished  from  those  of  foreign  make,  both  in  color  and 
form  and  in  the  imprint  of  the  wrappings  and  labels.  The 
wording  of  the  labels  on  Russian  preparations  must  be  in  the 
Russian  language,  and  in  conspicuous  characters.  The  words 
"of  Russian  origin"  must  appear  on  the  labels,  and  also  a 
phrase  showing  that  the  preparation  is  made  after  the  formula 
of  the  original  manufacturer. 

These  later  regulations  indicate  an  attempt  on  the  part  of  the 
Russian  authorities  to  provide  against  unfair  competition,  a  mat- 
ter about  which  the  law  of  that  Empire  has  before  been  silent. 
Hitherto,  the  Russian  courts  have  made  registration  the  basis 
of  suits  for  unfair  competition,  giving  no  protection  to  owners 


452  RUSSIA 

of  proprietary  medicines,  who  might  wish  to  market  their  prod- 
ucts in  Russia,  except  that  secured  by  registration. 

The  present  requirements  of  the  board  of  the  health  make  it 
possible  to  protect  the  outer  wrappings  of  medicinal  preparations 
from  confusion  with  similar  products  of  Russian  origin.  The 
decree  is  therefore  regarded  as  an  important  step  in  the  pro- 
tection of  foreign  trade  marks  and  labels.  (Gewerblicher 
Rechtsschutz  und  Urheberrecht,  1912,  p.  111.) 

Punishment  for  Counterfeiting  a  Trade  Mark. 

Five  directors  of  a  rubber  concern  in  Riga  were  adjudged 
guilty  of  counterfeiting  the  trade  mark  of  a  German  firm,  con- 
sisting of  the  representation  of  an  elephant,  and  sentenced  to 
imprisonment  for  a  term  of  two  months.  Under  the  Russian 
law,  a  dealer  or  producer  who  makes  unauthorized  use  of  an- 
other's mark  whether  upon  his  goods,  on  his  labels  or  wrappers, 
or  in  price  lists  or  advertising,  or  who  uses  in  his  business  a  mark 
closely  resembling  that  in  use  by  another,  is  liable  to  a  maximum 
penalty  of  eight  months'  imprisonment. 

Trade  Mark  Protection. 

Information  as  to  the  operations  of  the  trade  mark  law  in 
Russia  is  very  difficult  and  almost  impossible  to  obtain.  The 
field  is  one  which  appears  to  have  been  little  inquired  into. 

It  appears  that  there  is  produced  in  France  a  tonic  wine  under 
the  name  "Wine  of  Saint  Raphael"  which  has  an  extensive  sale 
both  there  and  abroad.  In  the  year  1896  a  Russian  firm  ar- 
ranged with  one  Gras  domiciled  at  Saint  Raphael  in  France  to 
register  in  that  country  a  trade  mark,  the  essential  feature  of 
which  was  the  words  "Wine  of  Saint  Raphael"  followed  by  the 
name  of  the  department  (Var)  in  which  the  town  of  Saint 
Raphael  was  located.  A  company  was  then  formed  for  the  ex- 
ploitation of  the  trade  mark  so  registered  under  the  name  of 
the  "Society  for  the  Production  of  Wine  of  Saint  Raphael 
(Var),"  and  under  this  name  and  mark  the  company  began 
extensively  to  put  out  the  product. 

The  company,  however,  never  had  any  vineyards  at  Saint 
Raphael  nor  any  business  there,  and  indeed  the  wines  of  that 
region  were  not  of  a  character  in  any  way  suited  to  their  pur- 
pose, because  not  in  any  way  similar  to  the  genuine  wine  of 
Saint  Raphael,  and  therefore  not  capable  of  competing  with  it. 
The  company  did  procure  a  wine  somewhat  similar  from  other 
sources  and  sold  it  extensively  in  Russia. 

In  France  the  injured  company  was  able  to  procure  redress, 
obtaining  the  cancellation  of  the  trade  mark  registered  by  Gras, 
and  a  judgment  for  ten  thousand  francs  against  the  company. 
This  relief  was  obtained  in  a  judgment  of  the  court  of  first 
instance  at  Marseilles  under  date  of  September,  1899,  and  was 


RUSSIA 


453 


carried  by  appeal  to  the  Court  of  Cassation,  where  it  was  af- 
firmed in  April,  1905. 

It  was  found  impossible,  however,  to  execute  this  judgment 
in  France,  for  the  reason  that  the  parties  had  never  had  any 
bona  fide  place  of  business  in  Saint  Raphael,  and  that  the  com- 
pany defendant  had  entirely  disappeared  when  the  decision  be- 
came final.  Therefore,  the  successful  party  addressed  itself  to 
the  Russian  courts  for  the  purpose  of  their  obtaining  the  relief 
which  it  was  unable  to  obtain  at  home.  Messrs.  Kempner  Bros, 
were  still  continuing  in  Russia  to  sell  the  offending  product,  in 
spite  of  the  adverse  decision  of  the  French  courts  and  in  spite  of 
the  cancellation  of  their  registration  in  that  country. 

Upon  the  suit  of  the  French  company  in  February,  1906,  a 
judgment  was  rendered  by  the  Commercial  Court  of  Varsovie, 
ordering  the  cancellation  in  Russia  of  the  trade  mark  there  reg- 
istered by  Gras  and  requiring  the  withdrawal  from  the  market 
of  all  products  bearing  the  offending  mark.  This  judgment  was, 
however,  reversed  in  the  following  year  upon  the  technical 
ground  that  the  Russian  mark  was  based  upon  a  French  regis- 
tration other  than  that  which  had  been  cancelled  in  France  and 
that  this  registration,  although  of  a  mark  similar  to  that  can- 
celled in  France,  was  still  in  force. 

An  appeal  was  then  taken  by  the  French  company  to  the 
Russian  Senate,  but  its  appeal  was  rejected  in  the  year  1908, 
upon  the  ground  that  the  only  question  to  be  decided  was  whether 
the  French  registration  upon  which  the  Russian  registration  was 
based,  was  still  in  force  and,  this  appearing  to  be  the  case,  no 
attack  could  be  made  upon  the  Russian  registration.  Thus,  the 
injured  company  would  have  been  put  to  the  necessity  of  be- 
ginning over  again  in  France  after  nine  years,  and  seeking  to 
obtain  the  cancellation  of  the  remaining  French  registration,  the 
existence  of  which  had  caused  it  difficulty. 

The  matter  was,  however,  brought  to  the  attention  of  the 
French  Ambassador  at  St.  Petersburg,  it  being  pointed  out  to 
him  that  the  wine  sold  under  the  name  Saint  Raphael  by  Kemp- 
ner Bros.,  was  falsely  marked  as  to  its  origin,  for  the  reason  that 
not  only  was  it  not  produced  at  Saint  Raphael,  but  that  the 
wines  there  produced  were  of  an  entirely  different  character  from 
the  wine  marketed  under  that  name.  The  matter  thus  came 
before  the  Medical  Department  of  the  Russian  government,  which 
instituted  an  investigation  and  found  that  the  wine  of  Saint 
Raphael,  sold  by  Kempner  Bros.,  originated  in  their  own  estab- 
lishment at  Varsovie,  that  when  it  was  ready  for  the  market 
they  succeeded  by  fraudulent  means,  in  having  it  introduced 
into  the  custom  houses  and  there  marked  with  the  usual  marks 
indicating  foreign  origin.  Thus  marked,  it  was  issued  from  the 
custom  nouses  and  sold  to  the  public. 

These    fraudulent    practices    having    been    disclosed,    Messrs. 


454  SALVADOR 

Kempner  Bros,  found  themselves  in  the  hands  of  the  Russian 
police  and  were  obliged  to  sign  a  declaration  engaging  them- 
selves no  longer  to  sell  their  wine  under  the  name  Saint  Raphael 
nor  to  claim  medicinal  qualities  for  it  and  to  cease  from  adver- 
tising that  the  bottles  containing  their  wine  bore  the  stamp  of 
the  French  government,  no  authority  for  use  of  this  stamp  hav- 
ing been  obtained. 

Thus  the  French  company,  which  through  a  narrow  inter- 
pretation of  the  Russian  law  of  trade  marks  had  not  succeeded 
in  suppressing  the  infringement  of  its  trade  mark  in  the  courts, 
was  able,  nevertheless  to  compel  the  offending  party  to  desist 
from  the  wrongful  acts  done  to  its  prejudice  by  invoking  the 
provisions  of  the  domestic  law  of  the  country,  which  forbade 
deception  as  to  the  nature,  quality  or  origin  of  merchandise 
placed  upon  the  market.  (La  Propriete  Ind.,  1909,  p.  116.) 


SALVADOR 

The  area  of  this  Republic  is  7,230  English  square  miles,  and 
the  population  in  1909  was  estimated  to  be  1,118,300.  It  only 
possesses  a  coast  line  on  the  Pacific. 

The  principal  imports  are  cotton  goods,  drugs,  hardware,  flour 
and  yarn. 

MONEY — The  peso  (100  centavos)=4s.  (nominal  value)— 96 
cents  U.  S. 

WEIGHTS  AND  MEASURES — The  metric  system. 

Law. 
Law,  May  11,  1910. 

Term. 

The  registration  of  a  trade  mark  shall  remain  in  force  for 
twenty  years  and  expire  at  the  end  of  that  period,  unless  a  re- 
newal has  been  obtained  in  due  season.  Each  renewal  shall  be 
valid  for  twenty  years. 

Renewal. 

Any  registration  may  be  renewed  before  its  expiration  upon 
payment  of  the  fee  provided  by  this  law.  When  a  receipt  to 
that  effect  is  presented  to  the  Patent  Office  it  shall  enter  on  the 
register  the  renewal  of  the  mark  and  deliver  to  the  registrant 
a  cerificate  to  that  effect,  or  it  shall  note  the  renewal  of  the 
specimen  referred  to  in  Art.  15,  without  other  formality. 


SALVADOR  455 

Who  May  Register. 

The  owner  of  any  trade  mark,  whether  a  citizen  or  a  for- 
eigner, may  acquire  the  exclusive  right  to  the  use  of  the  same 
in  the  Republic  by  complying  with  the  provisions  of  this  law. 
The  party  who  was  the  first  to  use  the  trade  mark  shall  be  con- 
sidered the  owner  of  the  same. 

What  May  be  Registered. 

Any  sign  calculated  to  distinguish  the  products  of  a  factory 
or  of  agriculture  or  the  articles  of  a  trading  house  shall  be  con- 
sidered a  trade  mark. 

A  trade  mark  may  be  formed  by  anything  not  prohibited  by 
this  law  and  capable  of  being  used  to  distinguish  identical  or 
similar  articles,  but  of  different  origin. 

Marks  Not  Registrable. 

(1)  Letters,  words,  names,  coats  of  arms,  emblems  or  insig- 
nia used  by  the  native   State  or  municipalities,  or  by  foreign 
States  or  towns,  either  for  themselves,  or  for  their  employees  or 
their  institutions. 

(2)  The  shape  and  the  color  of  the  article. 

(3)  Generic  terms  or  expressions  used  to  designate  an  ar- 
ticle or  such  as  lack  novelty  with  regard  to  the  article  to  which 
they  are  appropriated,  in  any  language  whatsoever. 

(4)  Designations  in  common  use,  in  Spanish  or  any  other 
language,  to  indicate  the  character,  class  or  quality  of  the  article. 

(5)  Expressions  and  designs  contrary  to  morals. 

(6)  The  names  of  individuals  or  of  a  firm,  or  corporation 
unless  presented  in  some  particular  and  distinctive  form. 

(7)  A  trade  mark  previously  registered  or  employed  by  a 
third  party  or  resembling  such  trade  mark,  when  it  is  intended 
for  articles  of  the  same  character. 

(8)  The  name  or  portrait  of  a  person  without  the  consent 
of  the  latter.     In  the  case  of  a  deceased  person,  his  or  her  por- 
trait may  be  used  unless  objected  to  by  his  or  her  heirs. 

(9)  A  geographical  name  when  it  forms  the  essential  ele- 
ment of  the  trade  mark.     Such  a  name  may  be  used  only  to  in- 
dicate the  place  of  origin  of  the  article.     Names  of  places  be- 
longing to  private  estates  may  be  registered,  but  only  in  favor 
of  the  owners  or  with  their  consent. 

(10)  The  distinctive  signs  of  the  Red  Cross;  but  persons  or 
commercial  companies  which  have  hitherto  used  them  after  hav- 
ing had  them  duly  registered  shall  not  be  molested  nor  com- 
pelled  to  make  any   changes  therein,  without  prejudice  to   the 
regulations  which  the  Red  Cross  Society  may  issue.     (Art.  3.) 


456  SALVADOR 

Mode  of  Application. 

Any  person  wishing  to  acquire  the  ownership  of  a  trade  mark 
shall  make  application  therefor  to  the  Patent  Office. 
The  application  shall  be  accompanied  by: 

(1)  A  power  of  attorney  if  the  application  is  filed  by  an  at- 
torney. 

(2)  Twenty  specimens  of  the  trade  mark. 

(3)  A  stereotype  of  the  mark,  which  shall  not  be  less  than 
15  nor  more  than  100  mm.  in  length  and  width,  and  20  to  30 
mm.  in  height.     When  a  trade  mark  consists  of  several  distinct 
parts,  a  stereotype  shall  be  filed  for  each  of  them. 

(4)  A  receipt  from  the  competent  treasury  showing  payment 
of  the  fees  provided  by  law. 

(5)  The  consent  in  writing  of  the  party  in  interest  in  the 
cases  referred  to  under  8  and  9  of  Art.  3.     Such  consent  shall 
not  be  necessary  in  the  case  of  a  foreign  trade  mark  duly  regis- 
tered in  the  country  of  origin.     Nor  shall  it  be  required  in  case 
of  renewal  of  a  trade  mark  previously  registered  in  conformity 
with  this  law. 

The  application  shall  recite : 

(1)  The  name  and  residence  of  the  owner  of  the  trade  mark. 

(2)  A  detailed  statement  or  description  of  the  trade  mark 
settino-  forth  the  essential  parts  claimed  by  the  applicant. 

(3)  The  goods  or  articles  for  which  the  trade  mark  is  in- 
tended. 

(4)  The  nationality  of  the  trade  mark. 

(5)  The  country  and  city  or  place  where  the  article  is  man- 
ufactured. 

(6)  The  name  of  the  factory,  if  it  has  one.     (Art.  13.) 
When  an  application  has  been  filed,  the  Patent  Office  shall 

note  thereon  the  day  and  hour  of  filing,  and  shall  number  and 
"flourish"  each  of  the  sheets  composing  it. 

The  Patent  Office  shall  cause  the  application  of  the  party  in 
interest  to  be  published  three  times  in  the  Official  Journal ;  and 
if  within  90  days  following  such  publication  no  notice  of  oppo- 
sition is  filed,  the  Office  shall  declare  the  trade  mark  to  be  the 
property  of  the  applicant ;  it  shall  determine  the  class  of  goods 
for  which  the  trade  mark  is  to  be  used,  and  shall  order  the  regis- 
tration of  the  trade  mark ;  it  shall  return  to  the  registrant  one 
of  the  specimens  of  the  latter,  on  which  have  been  noted  the 
number  and  pages  of  the  register  relating  to  such  trade  mark 
and  a  statement  to  the  effect  that  the  registration  fee  has  been 
paid  and  certifying  to  the  filing  of  the  application.  In  case  of 
opposition,  registration  shall  be  suspended,  and  the  parties  shall 
be  required  to  establish  their  rights  before  the  courts  having 
jurisdiction  in  the  matter,  which  shall  decide  in  whose  favor  the 
trade  mark  is  to  be  registered.  The  party  opposing  the  registra- 


SALVADOR  457 

tion  shall  file  his  application  within  90  days,  and  transmit  to 
the  Patent  Office  a  verified  statement  to  that  effect ;  if  such 
statement  is  not  filed  within  the  time  specified  the  Office  shall 
proceed  to  the  registration  of  the  mark.  (Art.  15.) 

Any  person  who  considers  himself  injured  by  the  registration 
of  a  trade  mark  shall  be  at  liberty  to  apply  for  its  cancellation ; 
but  this  right  of  action  shall  be  limited  to  five  years  from  the 
date  of  registration.  The  action  shall  be  decided  by  ordinary 
court  proceedings. 

The  right  of  priority  for  the  ownership  of  a  trade  mark  shall 
be  decided  according  to  the  use  which  has  been  made  of  the 
mark;  and  if  it  has  not  been  used,  then  according  to  the  day 
and  hour  when  the  application  was  filed  in  the  Patent  Office. 

Registration  of  a  trade  mark  confers  the  right  to  its  exclusive 
use  for  the  articles  to  which  it  is  appropriated  and  for  all  other 
articles  of  the  same  class  and  character. 

Documents  Required. 

Power  of  attorney,  legalized  by  Consul ;  certified  copy  of  home 
registration,  legalized  by  Consul ;  20  copies  of  the  mark.  (Forms 
for  application  may  be  obtained  from  B.  Singer's  Offices.) 

Opposition. 

The  right  to  oppose  the  use  of  any  trade  mark  likely  to  cause 
confusion,  directly  or  indirectly,  between  the  products  shall  be- 
long to  the  manufacturer,  merchant  or  agriculturist  who  shall 
have  complied  with  the  formalities  prescribed  by  this  law. 

Assignment. 

The  transfer  or  sale  of  an  establishment  implies  that  of  the 
trade  mark,  except  in  case  of  a  stipulation  to  the  contrary,  and 
the  assignee  shall  have  the  right  to  use  such  trade  mark,  even  if 
constituted  by  a  name,  in  the  same  manner  as  the  assignor, 
without  other  restrictions  than  those  expressly  imposed  by  the 
deed  of  assignment. 

Trade  Names. 

The  name  of  the  merchant  or  producer,  that  of  the  firm,  of 
the  corporation,  the  commercial  name  of  a  house  or  establish- 
ment trading  in  certain  articles  of  goods,  that  of  a  periodical, 
office  or  agency,  shall  constitute  ownership  for  the  purposes  of 
this  law. 

Any  person  wishing  to  engage  in  an  industry,  commerce,  or 
specialty  already  carried  on  by  another  person,  under  the  same 
name  or  the  same  conventional  designation,  shall  be  compelled 
to  adopt  a  modification  which  will  plainly  distinguish  such 


458  SALVADOR 

name  or  designation  from  that  used  by  the  house  or  establish- 
ment already  in  existence. 

If  a  person  injured  by  the  use  of  a  name  does  not  give  notice 
of  opposition  within  one  year  from  the  day  when  a  third  party 
began  using  the  same  in  a  notorious  manner,  he  shall  lose  all 
right  of  opposition  in  the  matter.  The  action  in  such  case  shall 
be  decided  by  ordinary  court  proceedings. 

Corporations  shall  have  the  same  right  to  the  name  they  bear 
as  any  individuals  and  shall  be  subject  to  the  same  restrictions. 

The  right  to  the  exclusive  use  of  a  name  by  reason  of  owner- 
ship shall  terminate  with  the  discontinuance  of  the  trading  firm 
bearing  the  same  or  of  the  sale  of  the  special  article  to  which 
it  is  appropriated. 

Registration  of  the  name  shall  not  be  necessary  to  exercise 
the  rights  granted  by  this  law. 

Classification. 

For  the  purposes  of  this  law  of  1910,  the  merchandise  to 
which  trade  marks  shall  be  applied  is  identical  with  that  adopted 
by  Argentine  Republic.  Altogether  there  are  eighty  classes. 
(See  Argentine.) 

It  shall  be  necessary  to  affix  the  trade  mark  to  the  articles 
to  which  it  is  appropriated.  If  it  is  not  used  within  a  term  of 
one  year  from  the  date  of  registration,  or  if  it  ceases  to  be  used 
for  one  year,  it  shall  become  null  and  void. 

In  the  case  of  a  foreign  trade  mark,  importation  of  the  article 
into  Salvador  is  not  required,  and  the  mark  shall  not  be  for- 
feited provided  the  provisions  of  Article  9  are  complied  with 
outside  of  this  Republic. 

Fees. 

All  documents  filed  in  the  Patent  Office  for  the  registration 
of  trade  marks  shall  be  written  on  stamped  paper  at  10  centavos 
a  sheet. 

Certificates  of  registration  asked  for  by  the  parties  in  interest 
shall  be  written  on  stamped  paper  at  25  centavos  a  sheet. 

Certificates  of  registration  transmitted  to  the  custom  houses 
shall  be  written  on  stamped  paper  at  10  centavos  a  sheet. 

The  registration  fee  shall  be  5  pesos  for  each  trade  mark. 

When  registrants  file  certificates  of  registration  printed  at 
their  own  expense,  they  may  be  accepted  on  unstamped  paper, 
but  a  revenue  stamp  equivalent  to  the  total  value  of  the  stamped 
paper  required  by  this  law  shall  be  offixed  thereto,  and  such 
stamp  shall  be  canceled  by  the  seal  of  the  Patent  Office. 

The  publication  of  a  trade  mark  or  of  an  application  for  reg- 
istration shall  cost  the  registrant  or  applicant  not  to  exceed  5 
pesos. 

All  laws  which  directly  or  indirectly  charge  the  registration  of 


SALVADOR  459 

trade  marks  with  expenses  of  stamps  or  stamped  paper  are  ab- 
rogated. 

Law  in  Force  in  Salvador  to  Prevent  the  Sale  or  Importation! 
of  Goods  Bearing  a  False  Indication  of  Origin. 

No  laws  are  in  force  to  prevent  the  importation  or  sale  of 
goods  bearing  a  false  indication  of  foreign  origin  except  as  re- 
gards goods  specially  protected  by  registered  trade  marks.  The 
sale  of  goods  marked  with  a  false  trade  mark  is  prohibited  by 
law.  Prosecutions  are  rare,  but  there  would  be  no  serious  diffi- 
culty in  procuring  a  conviction.  Judicial  fees  as  a  rule  are  low, 
and  lawyers'  services  are  not  highly  paid.  No  steps  are  taken 
to  determine  the  place  of  origin  of  imported  goods.  There  are 
no  requirements  as  to  the  marking  of  imported  goods  to  show 
the  country  or  place  of  origin. 

Marking  Goods:     "Marca  Registrada." 

Infringemerit. 

The  following  cases  shall  constitute  infringement  of  a  trade 
mark: 

(1)  When  the  original  trade  mark  is  reproduced  on  mer- 
chandise or  products  of  the  same  character  as  those  to  which 
it  is  appropriated. 

(2)  When  merchandise  bearing  such  reproduced  trade  mark 
is  sold  or  offered  for  sale. 

(3)  When   such   reproduced  trade  marks  are   sold,   offered 
for  sale  or  bought. 

(4)  When  original  trade  marks  are  sold,  offered  for  sale,  or 
bought  without  the  written  consent  of  the  owner. 

(5)  When  trade  marks  are  used  which  contain  false  state- 
ments  as   to  the  nature,   amount,   quality,  origin   and  place   of 
manufacture  of  the  articles  or  goods,  or  when  false  claims  are 
made  as  to  titles,  medals,  diplomas,  or  other  distinctions  having 
been  obtained  therefor  at  expositions  or  otherwise. 

(6)  When  a  trade  mark,  without  being  reproduced  is  de- 
tached or  separated  from  an  article  to  be  applied  to  another. 

(7)  When  a  person  affixes  his  name,  that  of  his  establish- 
ment, or  any  other  word  or  sign  to  an  original  trade  mark. 

(8)  When   receptacles  bearing  the   trade  mark  of   a   third 
party  are  filled  with  adulterated  products ;  when  such  receptacles 
are  filled  with  products  which   do  not  correspond  to  the  true 
statements  appearing  on  the  trade  mark  a^nlied  to  the  recep- 
tacle; when  products  of  different  origin  or  adulterated  ones  are 
mixed  with  the  authentic  products  bearing  original  trade  marks, 
and  when  a  person  keeps  or  sells  such  products,  which  shall  be 
presumed  to  be  the  case  when  they  are  found  in  his  shops,  stores 
or  cellars. 


460  SERVIA 

The  Patent  Office  shall  send  to  all  the  custom  houses  a  copy 
of  all  the  registrations  of  trade  marks  effected  or  which  may  be 
effected,  together  with  a  specimen  of  each  trade  mark. 

In  case  of  importation  of  merchandise  to  which  fraudulent 
trade  marks  are  affixed,  the  collector  of  customs  shall  turn  such 
merchandise  over  to  the  proper  courts. 

An  article  is  presumed  to  bear  a  fraudulent  trade  mark  when 
it  comes  from  a  country  other  than  that  stated  in  the  applica- 
tion in  accordance  with  the  terms  of  Art.  l.'J. 

Any  machine  or  instrument  designed  to  counterfeit  trade 
marks  shall  be  confiscated. 


%     SERVIA 

The  area  of  this  kingdom  consists  of  about  19,000  square 
miles.  The  population  in  1911  was  estimated  at  2,690,800. 
Servia  previous  to  1877  was  subject  to  Turkey,  but  in  that  year 
declared  its  independence  which  was  acknowledged  in  1878  at 
the  Congress  of  Berlin. 

The  imports  consist  of  paper,  wool  and  hair,  timber  and 
wooden  articles,  live  stock  and  animal  produce,  provisions  and 
liquors,  pottery  and  glass,  metals,  hides,  rubber  and  oilcloth, 
groceries  and  fruits,  chemicals  and  colors,  fatty  produce  (oils, 
etc.),  machinery,  instruments,  etc.,  cotton,  hemp,  flax,  etc.  (chiefly 
yarns),  textile  goods,  silk,  fancy  and  cutlery  goo^ls,  and  ready- 
made  clothing. 

MONEY — The  dinar=100  paras=9  l/2d.  or  one  franc.=19 
cents  U.  S. 

WEIGHTS  AND  MEASURES — The  metric  system. 

«• 

Law. 
Laws  of  May  30,  1884. 

Duration. 

Trade  mark  registration  extends  for  the  term  of  10  years. 
After  the  expiration  of  this  term  the  registration  may  be  renewed, 
provided  that  the  prescriptions  of  the  law  are  complied  with. 

Requirements. 

Power  of  attorney,  legalized  by  Servian  Consul ;  five  copies  of 
mark  and  a  sample  of  material  marked. 


SERVIA  461 

Mode  of  Application. 

Any  one  who  desires  to  secure  the  exclusive  right  to  use  a 
mark  must  deposit  three  copies  thereof  at  the  Departmental  Tri- 
bunal of  the  locality  of  his  place  of  business.  If  the  applicant  is 
established,  at  Belgrade  or  is  a  foreigner  the  registration  takes 
place  at  the  Tribunal  of  Commerce  of  Belgrade.  In  either  case 
the  applicant  must  with  his  deposit  give  an  exact  list  of  the 
goods  to  which  the  mark  is  to  be  applied.  If  the  marks  are 
intended  for  articles  of  metal,  glass,  pottery,  etc.,  specimens  of 
these  articles  bearing  the  mark  must  also  be  deposited.  Marks 
and  specimens  must  be  deposited  of  the  same  dimensions  em- 
ployed in  commerce.  Likewise  the  use  of  a  mark  shall  not  be 
allowed  but  on  the  scale  in  which  it  has  been  registered.  (Art. 

HO  H 

Of  marks  registered  under  Article  11,  one  copy  is  to  remain 
on  deposit  at  the  Tribunal,  one  to  be  sent  to  the  applicant,  and 
the  third  to  be  deposited  with  the  specimen  at  the  Ministry  of 
Agriculture  and  Commerce.  (Art.  13.) 

Every  application  for  the  registration  of  a  mark  requires  a  fee 
of  twenty  dinars  (francs),  in  stamps,  which  must  be  affixed  to 
the  application.  (Art.  14.) 

Annulment. 

The  annulment  of  a  trade  mark  may  be  declared  by  the  De- 
partmental Tribunal,  and  at  Belgrade  by  the  Tribunal  of  Com- 
merce of  that  city.  Annulment  is  declared  in  a  judicial  decision. 
It  will  be  noted  in  the  register  of  marks,  and  announced  by  a 
judicial  insertion  in  the  Official  Journal.  Annulment  of  a  mark 
shall  be  declared :  (a)  In  case  of  violation  of  the  provisions  of 
Article  2.  (&)  By  virtue  of  a  judicial  decision  rendered  in  a 
suit  or  contest  regarding  marks,  (c)  For  failure  to  renew  the 
registration.  (Art.  15.) 

In  the  last  case  a  fine  of  twenty  dinars  is  to  be  paid  by  the 
party  found  culpable.  (Art.  19.) 

Offenses  and  Penalties. 

Any  violation  of  the  exclusive  right  to  a  mark  whether  by 
illicit  use  or  by  counterfeiting  it,  gives  to  the  injured  owner  the 
right  to  demand  the  injunction  of  the  fraudulent  mark,  and  its 
removal  from  the  merchandise.  Moreover,  the  owner  may  de- 
mand the  seizure  and  destruction  not  only  of  the  mark,  but  also 
of  the  tools  and  instrument  used  in  their  fabrication.  The  courts 
shall  fix  in  conformity  with  the  provisions  of  the  Civil  Code  the 
amount  of  damages  to  be  paid  to  the  injured  party.  The  owner 
can  demand  that,  in  lieu  of  damages,  the  infringer  be  condemned 
to  a  fine  of  from  50  to  300  dinars,  to  his  benefit.  The  court 
may  agree  to  this  motion  and  assign  to  the  injured  party  the 


462  SERVIA 

said  amount  as  indemnity.  These  provisions  are  applicable 
without  prejudice  to  the  penalties  prescribed  in  Articles  23,  24: 
and  25  of  this  law.  (Article  20.) 

Counterfeiting  is  established  when  it  is  determined  by  experts 
to  exist  under  the  terms  of  this  law.  (Article  21.) 

If  fraudulent  intent  is  established  the  offender  shall  be  liable 
to  a  fine  of  from  50  to  500  dinars  to  the  profit  of  the  Treasury, 
and  that  without  prejudice  to  the  penalties  prescribed  by  the 
Penal  Code  and  by  Article  2  of  this  law.  (Article  24.) 

For  a  second  offense  the  fine  is  doubled.  For  a  third  offense 
the  offender  shall  be  further  liable  to  imprisonment  from  fifteen 
to  sixty  days,  and  his  establishment  may  be  closed  for  a  period 
of  from  three  to  six  months.  Duress  may  take  place  when  one- 
third  of  the  offender's  property  shall  not  suffice  to  pay  the  fine 
incurred.  Duress  shall  be  calculated  at  the  rate  of  one  day  in 
prison  to  five  dinars  fine.  (Article  25.) 

If  a  trade  mark  is  infringed,  the  party  to  whom  any  damage 
may  be  caused  shall  have  the  right  to  sue  for  damages  and  to 
have  all  those  instruments  confiscated  and  destroyed  which  may 
have  been  used  by  the  infringer. 

All  goods  to  which  infringed  trade  marks  are  applied  may  be 
confiscated  when  they  are  publicly  exposed  or  imported. 

Actions  may  be  instituted  before  the  Courts  of  First  Instance 
or  before  the  Tribunal  of  Commerce  in  Belgrade. 

Assignment. 

The  right  of  ownership  to  a  trade  mark  is  transferable.  All 
transfers  relating  to  trade  marks  shall  be  recorded  and  the  Gov- 
ernment fee  for  each  record  of  a  transfer  shall  be  ?0  dinars,  i.  e., 
the  same  sum  as  that  due  for  the  registration  of  a  trade  mark. 

Adhesion  to  the  Additional  Act  of  Brussels 
of  December  14,  /poo. 

By  a  note  dated  August  10/23.  1909,  the  Minister  of  Foreign 
Affairs  of  Servia  announced  to  the  Swiss  Federal  Council  the 
adhesion  by  his  government  to  the  Additional  Act  of  Brussels 
of  Dec.  14,  1900,  modifying  the  International  Convention  of 
March  20,  1883,  for  the  Protection  of  Industrial  Property. 

In  accordance  with  Art.  16  of  the  Convention  this  adhesion 
will  take  effect  one  month  after  the  notification  given  to  the 
Union  States,  which  notification  was  effected  Sept.  10,  1909.  (La 
Propriete  Ind.,  Sept.  30,  1909.) 

Law  in  Force  in  Servia  to  Prevent  the  Sale  or  Importation  of 
Goods  Bearing  a  False  Indication  of  Origin. 

There  are  no  laws  or  regulations  in  force  to  prevent  the  sale 
or  importation  of  goods  bearing  a  false  indication  of  origin. 


SEYCHELLES  463 

The  law  prohibits  the  false  application  to  goods  of  trade  marks 
registered  in  Servia,  and,  in  cases  of  infringement  of  trade  marks 
not  registered  in  Servia,  an  action  for  damages  may  be  brought, 
provided  that  injury  can  be  proved. 


SEYCHELLES 

The  Seychelles  Islands  are  situated  between  the  parallels  of 
S.  lat.  4°  and  5°.  In  all  there  are  89  islands  under  the  Sey- 
chelles government.  The  Seychelles  Islands  altogether  are  esti- 
mated to  comprise  148  1/9  square  miles  with  an  estimated  popu- 
lation of  21,850. 

MONEY — 1  rupee  (100  cents)=l  s.  4  d.=32  cents  U.  S. 

WEIGHTS  AND  MEASURES — The  metric  system. 

Law. 
Merchandise  Marks  Ordinance,  1903,  No.  23. 

Duration. 
Fourteen  years ;  renewable. 

What  May  Be  Registered. 

A  name  of  an  individual,  or  firm,  printed,  impressed,  or  woven 
in  some  particular  or  distinctive  manner ;  or 

A  written  signature  or  copy  of  a  written  signature  of  the 
individual  or  firm  applying  for  registration  thereof  as  a  trade 
mark;  or 

A  distinctive  device,  mark,  brand,  heading,  label,  or  ticket. 

An  invented  word  or  invented  words ;  or 

A  word  or  words  having  no  reference  to  the  character  or 
quality  of  the  goods,  and  not  being  a  geographical  name. 

There  may  be  added  to  any  one  or  more  of  the  essential 
particulars  mentioned  in  this  section  any  letter,  words,  or  figures, 
or  combination  of  letters,  words,  or  figures,  or  any  of  them,  but 
the  applicant  for  registration  of  any  such  additional  matter  must 
state  in  his  application  the  essential  particulars  of  the  trade 
mark,  and  must  disclaim  in  his  application  any  right  to  the  ex- 
clusive use  of  added  matter,  and  a  copy  of  the  statement  and 
disclaimer  shall  be  entered  on  the  register. 

A  person  need  not  under  this  section  disclaim  his  own  name 
or  the  foreign  equivalent  thereof,  or  his  place  of  business,  but 
no  entry  of  any  such  name  shall  affect  the  right  of  any  owner  of 


464  SlAM 

tiie  same   name  to  use   that   name   or  the   foreign   equivalent 
thereof. 

Any  special  and  distinctive  word  or  words,  letter,  figure,  or 
combination  of  letters  or  figures  or  of  letters  and  figures  used 
as  a  trade  mark  before  August  13,  1875,  may  be  registered  as  a 
trade  mark  under  this  Act. 

Requirements. 

Authorization  to  agent  signed  by  applicant  or  applicants;  full 
name,  address  and  occupation  of  the  applicant;  full  description 
of  goods  to  be  covered ;  wood  block  or  electrotype  of  the  mark, 
preferably  not  more  than  two  inches  in  breadth  and  width, 
otherwise  additional  space  is  required  for  advertising,  which 
must  be  paid  for;  six  copies  of  the  mark. 

Classification. 

Same  as  in  Great  Britain. 

For  practice,  etc.,  follow  entirely  the  rules  and  regulations,  as 
well  as  the  penal  code  of  the  Mauritius  ordinance. 


SIAM 

The  kingdom  of  Siam  consists  of  an  estimated  area  of  about 
195,000  square  miles.  The  population  according  to  the  latest  esti- 
mates is  about  6,000,000.  Some  52*5  miles  of  government  railways 
are  in  working  order.  The  greatest  importance  is  also  attached  by 
the  government  to  irrigation  works. 

Rice  is  the  principal  item  of  export.  Gold  is  being  worked  in 
small  quantities  throughout  Siam,  though  the  production  is  not 
estimated  to  be  more  than  1,000  ounces.  There  are  also  ruby 
mines  behind  Chantaboon,  worked  by  the  New  Kabin  Gold  Mines 
of  Siam,  Limited. 

MONEY — The  tical=36^  cents. 

Laws. 

The  new  penal  code  for  the  Kingdom  of  Siam,  which  became 
effective  September  21,  1908,  contains  certain  provisions  for  the 
protection  of  trade  marks  and  trade  names.  Consul-General 
John  Van  A.  MacMurray  of  Bangkok,  forwards  a  copy  of  an 
English  rendering  of  the  relevant  sections,  quoted  from  the  final 
English  draft  version  of  the  code.  He  states  that  there  is  as 
yet  no  provision  for  the  registration  of  trade  marks  or  trade 
names.  The  new  code  follows: 


SOUTHERN  NIGERIA  465 

Sec.  235.  Whoever  knowingly  puts  or  causes  to  appear  on 
any  goods,  packings,  coverings,  advertisements,  price-lists,  busi- 
ness letters,  circulars,  or  the  like  the  name  of  any  other  person 
or  firm  to  the  use  of  which  he  has  no  right  shall  be  punished 
with  imprisonment  of  one  month  to  one  year  and  a  fine  of  fifty 
to  two  thousand  ticals  (tical=about  36*4  cents). 

Sec.  236.  Whoever  counterfeits  any  trade  mark,  or  any  name 
or  firm  name  used  as  a  trade  mark,  shall  be  punished  with  im- 
prisonment of  three  months  to  three  years  and  a  fine  of  one  hun- 
dred to  five  thousand  ticals. 

Sec.  237.  Whoever  without  counterfeiting  a  trade  mark 
fraudulently  imitates  it  in  a  manner  calculated  to  deceive  a  pur- 
chaser shall  be  punished  with  imprisonment  of  one  month  to  one 
year  and  a  fine  of  fifty  to  two  thousand  ticals. 

Sec.  238.  Whoever  imports,  sells,  or  exposes  for  sale  any 
property  which  he  knows  to  bear  a  false  name  or  a  false  trade 
mark  or  an  imitated  trade  mark,  as  described  in  Sections  235, 
236  and  237,  shall  be  liable  to  the  punishment  prescribed  by  such 
sections,  as  the  case  may  be. 

Sec.  239.  Any  false  instrument  of  weighing  or  false  weight 
or  measure  mentioned  in  Sections  233  and  234,  and  any  property 
bearing  a  false  name  or  a  false  trade  mark  or  an  imitated  trade 
mark,  as  described  in  Sections  235,  236  and  237,  shall  be  for- 
feited without  regard  to  the  conviction  or  non-conviction  of  any 
particular  person.  (From  Daily  Consular  and  Trade  Reports.) 

In  the  absence  of  any  provision  by  the  Siamese  government 
for  the  registration  of  trade  marks,  it  is  customary  to  register 
such  marks  at  the  consulates  of  the  respective  countries.  (Daily 
Consular  Reports,  Dec.  13,  1909.) 


SOUTHERN  NIGERIA 

(Includes  Lagos.) 

The  colony  and  protectorate  of  Southern  Nigeria,  comprising 
an  area  estimated  at  77,000  square  miles,  has  been  formed  by 
the  amalgamation  of  the  two  administrations  of  Lagos  and 
Southern  Nigeria. 

The  territory  for  the  purposes  of  administration  has  been 
divided  into  three  Provinces:  (1)  The  Western  or  Lagos 
Province,  comprising  the  former  Colony  or  Protectorate  of 
Lagos  with  headquarters  at  Lagos,  having  an  area  of  about 
28,000  square  miles;  (2)  the  Central  or  Niger  Province  with 
headquarters  at  Warri ;  (3)  the  Eastern  or  Calabar  Province 
with  headquarters  at  Calabar.  Each  of  these  provinces  is  ad- 
ministered by  a  Provincial  Commissioner  under  the  direction  of 

80 


466  SOUTHERN  NIGERIA 

the  Governor.  The  headquarters  of  the  whole  administration 
has  been  established  at  Lagos.  The  total  native  population  is 
estimated  at  6,086,000  and  the  European  population  at  2,000. 
The  principal  imports  are  cotton  goods  and  spirits. 

MONEY,  WEIGHTS  AND  MEASURES — Same  as  Great  Britain. 

Law. 
Ordinance  No.  18  of  1910. 

Duration  and  Renewal. 

The  registration  of  a  trade  mark  shall  be  for  a  period  of 
fourteen  years,  but  may  be  renewed  from  time  to  time  in  accord- 
ance with  the  provisions  of  this  ordinance.  (Art.  32.) 

The  Registrar  shall  on  application  made  by  the  registered 
proprietor  of  a  trade  mark  in  the  prescribed  manner  and  within 
the  prescribed  period,  renew  the  registration  of  such  trade  mark 
for  a  period  of  fourteen  years  from  the  expiration  of  the  original 
registration  or  of  the  last  renewal  of  registration,  as  the  case 
may  be,  which  date  is  herein  termed  the  expiration  of  the  last 
registration.  (Art.  33.) 

Registrablc  Trade  Marks. 

A  registrable  trade  mark  must  contain  or  consist  of  at  least 
one  of  the  following  essential  particulars: 

(1)  The  name  of  a  company,  individual  or  firm  represented 
in  a  special  or  particular  manner. 

(2)  The  signature  of  the  applicant  for  registration  or  some 
predecessor  in  his  business. 

(3)  An  invented  word  or  invented  words. 

(4)  A   word   or  words   having   no   direct   reference   to  the 
character  or  quality  of  the  goods  and  not  being  according  to 
its  ordinary  signification  a  geographical  name  or  surname. 

(5)  Any  other  distinctive  mark,  but  a  name,  signature,  or 
word  or  words,  other  than  such  as  fall  within  the  description  in 
the  above  paragraphs   (1),   (2),  (3),   (4),  shall  not,  except  by 
order  of  the  court,  be  deemed  a  distinctive  mark. 

For  the  purposes  of  this  section  "distinctive"  shall  mean 
adapted  to  distinguish  the  goods  of  the  proprietor  of  the  trade 
mark  from  those  of  other  persons. 

In  determining  whether  a  trade  mark  is  so  adapted  the  court 
may,  in  the  case  of  a  trade  mark  in  actual  use,  take  into  con- 
sideration the  extent  to  which  such  user  has  rendered  such  trade 
mark  in  fact  distinctive  for  the  goods  with  respect  to  which  it  is 
registered  or  proposed  to  be  registered. 

Provided  always  that  any  mark  which  has  been  registered  as 
a  distinctive  mark  in  England  under  the  Trade  Marks  Act,  1905, 
shall  be  deemed  to  be  a  distinctive  mark  for  the  purpose  of  this 
ordinance.  (Art.  8.) 


SOUTHERN  NIGERIA  467 

Any  person  who  has  registered  a  trade  mark  in  Great  Britain 
shall  be  entitled  to  registration  of  his  trade  mark  under  this 
ordinance  in  priority  to  other  applicants,  and  such  registration 
shall  have  the  same  date  as  the  application  for  registration  in 
Great  Britain ;  provided  that  this  application  is  made  within  four 
months  from  his  applying  for  protection  in  Great  Britain. 

Provided  that  nothing  in  this  section  contained  shall  entitle 
the  proprietor  of  the  trade  mark  to  recover  damages  for  infringe- 
ments happening  prior  to  the  date  of  the  actual  registration  of 
his  trade  mark  in  the  Colony. 

The  use  in  the  Colony  during  the  period  aforesaid  of  the  trade 
mark  shall  not  invalidate  the  registration  of  the  trade  mark 
(Art.  61.) 

Colored  Trade  Marks. 

A  trade  mark  may  be  limited  in  whole  or  in  part  to  one  or 
more  specified  colors,  and  in  such  case  the  fact  that  it  is  so 
limited  shall  be  taken  into  consideration  by  any  tribunal  having 
to  decide  on  the  distinctive  character  of  such  trade  mark.  If 
and  so  far  as  a  trade  mark  is  registered  without  limitation  of 
color  it  shall  be  deemed  to  be  registered  for  all  colors.  (Art. 
10.) 

Mode  of  Application. 

Any  person  claiming  to  be  the  proprietor  of  a  trade  mark  may 
by  himself  or  his  agent  apply  to  the  Registrar  for  the  registra- 
tion thereof. 

The  application  must  be  made  in  the  prescribed  form,  and 
must  be  accompanied  by  not  less  than  three  representations  of 
the  trade  mark  and  by  a  stereotype  block  of  such  representation. 

The  applicant  must  state  the  particular  goods  or  class  of  goods 
in  connection  with  which  he  desires  his  trade  mark  to  be  reg- 
istered. 

The  application  must  be  left  with  or  sent  by  post  to  the 
Registrar. 

The  date  of  the  delivery  or  receipt  of  the  application  shall  be 
endorsed  thereon  and  recorded  in  the  Registrar's  office.  (Art. 
12.) 

Subject  to  the  provisions  of  this  ordinance  the  Registrar  may 
refuse  such  application  as  aforesaid,  or  may  accept  it  absolutely 
or  subject  to  conditions,  amendments  or  modifications. 

In  case  of  any  such  refusal  or  conditional  acceptance  the 
Registrar  shall,  if  required  by  the  applicant,  state  in  writing  the 
grounds  of  his  decision  and  the  materials  used  by  him  in  arriving 
at  the  same,  and  such  decision  shall  be  subject  to  appeal  to 
the  court. 

An  appeal  under  this  section  shall  be  made  in  the  prescribed 
manner,  and  on  such  appeal  the  court  shall,  if  required,  hear 


468  SPAIN 

the  applicant  and  the  Registrar,  and  shall  make  an  order  deter- 
mining whether,  and  subject  to  what  conditions,  amendments,  or 
modifications,  if  any,  the  application  is  to  be  accepted.  (Art. 
13.) 

Opposition. 

Any  person  may,  within  three  months,  or  such  further  time, 
not  exceeding  nine  months  in  all,  as  the  Registrar  may  allow, 
of  the  advertisement  of  the  application,  give  notice  to  the  Regis- 
trar of  opposition  to  such  registration. 

Such  notice  shall  be  given  in  writing  and  in  duplicate,  and 
shall  include  a  statement  of  the  grounds  of  opposition.  (Art. 
16.) 

Assignment, 

A  trade  mark  when  registered  shall  be  assigned  and  trans- 
mitted only  in  connection  with  the  good  will  of  the  business 
concerned  in  the  particular  goods  or  classes  of  goods  for  which 
it  has  been  registered,  and  shall  be  determinable  with  that  good 
will.  (Art.  26.) 

Infringement. 

In  an  action  for  the  infringement  of  a  trade  mark  the  court 
trying  the  question  of  infringement  shall  admit  evidence  of 
the  usages  of  the  trade  in  respect  of  the  get-up  of  the  goods  for 
which  the  trade  mark  is  registered  and  of  any  trade  marks  or 
get-up  legitimately  used  in  connection  with  such  goods  by  other 
persons.  (Art.  48.) 


SPAIN 

The  area  of  the  Kingdom  of  Spain,  including  the  Balearic 
Islands  (1,935  square  miles)  and  the  Canary  Isles  (2,807  square 
miles)  is  194,780  square  miles. 

The  population,  including  the  above  islands,  is  estimated  to 
be  19,712,585.  Her  colonies  or  distant  possessions  consist  of 
Fernando  Po,  Annobon,  Corisco  and  Eloby  on  the  coast  of 
Guinea  and  a  part  of  the  coast  of  Cape  St.  John  and  Bissayes  in 
the  Eastern  Archipelago. 

The  principal  minerals  exported  are  coal,  lead,  zinc,  antimony, 
copper  and  iron  ores,  iron  pyrites  and  manganese.  The  lead 
mining  industry  is  considered  the  most  important  in  Spain,  and 
the  principal  mines  are  in  the  provinces  of  Jaen  and  Almeria. 

The  foreign  supply  of  coal  in  Spain  is  practically  confined  to 
the  English  market. 


SPAIN  469 

MONEY — The  peseta    (of  100  centismos)    of  the  value  of  1 
franc=9^2<l  nominally=19  cents  U.  S. 
WEIGHTS  AND  MEASURES — Metric  system. 

Law. 
Law,  June  7,  1902. 

Term. 

The  maximum  term  for  the  registration  of  a  mark  is  twenty 
years,  counting-  from  the  date  of  the  issue  of  the  certificate,  and 
the  grant  extends  to  all  Spanish  territories. 

The  registration  of  marks  can  be  renewed  by  means  of  the 
same  proceedings  as  are  prescribed  for  the  first  registration. 
(Art.  51.) 

What  Cam  be  Registered. 

The  following  may  use  the  mark:  (a)  Agriculturists,  to  dis- 
tinguish the  products  of  the  soil,  agricultural  industry,  stock 
breeding,  and  in  general  all  operations  in  agriculture,  forestry, 
or  in  obtaining  products  from  the  earth,  (b)  Manufacturers,  to 
distinguish  the  products  of  their  factory,  (c*)  Merchants  to  dis- 
tinguish the  products  which  they  buy  for  the  purpose  of  selling 
again  under  their  responsibility  and  guarantee,  (d)  Craftsmen, 
on  the  products  resulting  from  the  exercise  of  their  skill  or  me- 
chanical art;  and  (e)  Persons  who  exercise  any  profession,  to 
distinguish  their  own  documents  or  their  intellectual  or  manual 
productions.  (Art.  23.) 

What  Cannot  be  Registered. 

The  following  cannot  be  chosen  as  marks,  signs  or  brands : 
(a)  The  national,  provincial,  or  municipal  coats  of  arms  or  bear- 
ings and  the  Spanish  orders  or  decorations,  at  least  without 
authority  therefor;  in  this  case  they  cannot  by  themselves  con- 
stitute a  mark,  being  merely  additions  to  the  principal  mark. 
Authority  may  be  given  by  the  Ministry  of  Agriculture,  Industry, 
Commerce  and  Public  Works  for  the  use  of  national  arms  and 
bearings ;  by  the  provincial  boards  of  deputies  and  corporations 
for  such  as  belong  to  them,  and  by  the  Ministry  of  State  for  the 
use  of  Spanish  orders  or  decorations.  (&)  The  arms,  bearings, 
crests  or  mottoes  of  foreign  States  or  Nations  without  the  ex- 
press consent  of  the  Government  concerned,  and  even  if  this  be 
obtained  they  shall  be  regarded  as  additions  to  the  principal 
mark,  (c)  Designations  in  common  use  in  trade  to  distinguish 
goods  or  classes  of  articles  and  also  technical  or  ordinary  names 
adopted  by  general  use  to  distinguish  them,  (d)  Designs  con- 


47°  SPAIN 

trary  to  public  morality  and  caricatures  tending  to  hold  up  to 
ridicule  ideas,  persons,  or  articles  worthy  of  respect,  (e)  Those 
marks  which  others  have  previously  registered  for  the  same  class 
of  products,  goods,  or  articles,  so  long  as  the  said  right  has 
not  lapsed  according  to  this  law.  (/)  All  marks  which  on  ac- 
count of  their  likeness  or  resemblance  to  others  already  granted, 
might  lead  to  confusion  and  error,  (g)  Those  referring  to  any 
religion  whatsoever,  if  it  can  be  inferred  that  the  trade  mark  is 
intended  to  ridicule  or  disparage  the  same,  (h)  The  badge,  em- 
blem, and  device  of  the  Red  Cross;  and  (t)  The  portraits  and 
names  of  living  people,  unless  their  permission  has  been  ob- 
tained, and  of  deceased  persons  if  the  relatives  within  the  fourth 
civil  degree  oppose  the  grant.  (Art.  28.) 

Requirements. 

Certified  copy  of  home  registration,  legalized  by  Spanish  Con- 
sul ;  legalized  power  of  attorney ;  five  specimens  of  mark  and 
one  electrotype. 

Mode  of  Application. 

The  documents  that  must  be  presented  in  order  to  obtain  regis- 
tration of  a  mark  are : 

1.  An  application  to  the  Minister,  formulating  the  petition 
for  the  mark  whose  registration  it  is  desired  to  obtain,  contain- 
ing always  in  it  the  Christian  name,  surname,  or  style  and  habit- 
ual domicile  of  the  interested  party,  as  well  as  that  of  his  repre- 
sentative, if  he  should  transact  the  business ;  the  concrete  enumer- 
ation of  the  products  which  the  mark  that  is  solicited  is  to  dis- 
tinguish, and  an.  indication  whether  the  mark  has  already  been 
registered  abroad  or  not. 

2.  A  detailed  description  in  duplicate  in  which  is  expressed 
with  all  clearness  the  class  of  the  mark  adopted,  the  figures  and 
signs  that  it  may  contain,  the  goods  upon  which  it  will  be  af- 
fixed, imprinted  or  employed  and  the  name  of  the  owner.    This 
description  shall  be  written,  typewritten  or  printed  on  sheets  of 
paper  32x22  cm.,  with  a  margin  on  the  left,  in  which  shall  be 
affixed  a  stamp  of  5  centimes  de  peseta  on  each  sheet. 

To  each  one  of  the  copies  of  this  description  shall  be  added, 
stitched,  a  sheet  of  equal  size,  or  double,  with  the  design  of  the 
mark  desired  to  be  registered,  expressing  its  scale,  and  in  which 
shall  be  represented  the  shadings,  tints  or  colors  which  the  in- 
terested party  believes  it  convenient  to  employ,  in  order  to  give 
an  exact  idea  of  the  mark.  This  sheet  shall  also  bear  affixed 
the  corresponding  revenue  stamp. 

The  descriptions  to  which  the  preceding  paragraphs  refer 
shall  be  formulated  in  the  Spanish  language,  without  abbrevia- 
tions, corrections  or  erasures. 

3.  Another  similar  description  to  the  foregoing,  written  by 


SPAIN  471 

hand,  typewritten,  autographed,  or  printed  on  half  sheets  of 
foolscap  written  on  one  side  only  for  its  publication  in  the  Bole- 
tin. 

4.  An  engraving  or  electrotype,  in  order  that  the  design  of 
the  mark  may  be  printed  in  black,  to  be  published  jointly  with 
the  description  in  the  Boletin.  It  shall  be  accompanied  more- 
over by  ten  proofs  or  impressions  of  the  mark  referred  to.  This 
electrotype  shall  have  at  the  maximum  10  cm.  of  length  by  8  cm. 
in  width. 

The  foreign  subjects  of  the  countries  that  belong  to  the  Union, 
or  that  by  virtue  of  the  treaties  enjoy  the  rights  of  reciprocity, 
must  present  a  certificate  of  the  registration  in  the  country  of 
origin  of  the  mark.  This  document  must  be  legalized  by  Consul, 
and  the  signature  of  the  latter  by  the  Minister  of  State.  It  will 
be  sufficient  if  the  translation  of  the  certificate  be  private. 

In  the  affirmative  case  the  documents  shall  be  sealed  and 
signed  by  the  Secretary,  cancelling  the  revenue  stamps  and  if 
there  should  be  no  defects  in  the  documentation,  such  as  the 
lack  of  the  electrotype  or  of  the  descriptions,  they  shall  be  pub- 
lished immediately  in  the  Boletin  Oficial  de  la  Propiedad  In- 
telectual  e  Industrial. 

If  defects  shall  be  found  in  the  papers  they  shall  be  stated  in 
the  application  papers  and  there  shall  be  conceded  a  term,  that 
shall  not  exceed  two  months,  in  order  that  the  interested  parties 
or  their  representatives  may  amend  them. 

The  publication  of  which  the  preceding  article  speaks  being 
made,  and  counting  from  its  date,  a  term  of  two  months  shall 
be  conceded  in  order  that  those  who  believe  that  they  have  a 
right  to  oppose  a  mark,  may  formulate  the  corresponding  op- 
position by  means  of  a  notice  presented  to  the  Ministry. 

Assignments. 

In  order  that  the  assignment  and  transfer  of  the  rights  of  in- 
dustrial property  in  their  various  manifestations  may  have  effect 
against  third  parties,  it  is  indispensable  that  it  be  done  by  a  pub- 
lic document. 

The  registration  of  every  act  involving  a  modification,  what- 
soever may  be  its  importance,  in  a  right  of  industrial  property, 
must  be  effected  directly  by  presentation  at  the  Office  of  the 
Registry  of  Industrial  Property  of  a  notarially  legalized  copy 
of  the  act  or  contract  of  cession  or  modification  of  the  right,  ac- 
companying it  with  15  pesetas  in  Government  stamped  paper 
for  the  fees  of  registration. 

The  official  charged  in  the  Registry  with  the  entry  into  the 
corresponding  book  of  the  transfers  and  modifications  of  the 
rights  of  industrial  property,  after  having  satisfied  himself  by 
the  examination  of  the  registry  books  and  of  the  respective  files 
that  the  mark  had  all  its  legal  validity  at  the  date  of  the  execu- 


472  SPAIN 

tion  of  the  act  of  transfer,  shall  enter  the  particulars  on  the  re- 
spective file  and  shall  propose  the  entry  and  that  the  correspond- 
ing- certificate  shall  be  issued  in  favor  of  the  new  proprietor  if 
he  may  have  solicited  it. 

There  shall  be  published  monthly  in  the  Boletin  de  la  Propie- 
dad  Intelectual  e  Industrial  a  detailed  statement  of  the  transfers 
and  modifications  of  the  rights  of  industrial  property  which  have 
been  registered  in  the  preceding  month. 

Forfeiture  of  Marks. 
Marks  shall  lapse : 

1.  For  having  outrun  the  time  fixed  for  their  duration. 

As  the  registration  of  marks  is  renewable,  the  interested 
parties  must  demand  in  order  to  avoid  the  declaration  of  lapsing, 
the  renewal  before  the  expiration  of  the  term  of  twenty  years 
for  which  they  were  conceded. 

2.  For  lack  of  payment  of  any  of  the  quinquennial  taxes  es- 
tablished in  Article  52  of  this  law. 

3.  By  the  extinction   of  the  personality  to  whom  belonged 
the  use  of  the  mark,  without  being  legally  substituted  by  who- 
ever is  to  succeed  him,  or  by  the  failure  to  use  the  said  mark 
during  three  consecutive  years,  unless  in  cases  of  force  majeure 
duly  proved. 

4.  By  final  sentence  of  a  competent  court,  but  only  as  regards 
the  person  defeated  by  the  judgment. 

5.  By  the  wish  of  the  interested  party. 

6.  At  the  instance  of  persons  or  corporate  bodies  who,  by 
virtue  of  the  present  law,  may  have   right  to  the  use  of  the 
marks,  who  may  demand  at  any  time  the  lapsing  of  those  already 
registered,  presenting  to  this  effect  the  necessary  justifications; 
when  as  the  result  of  these,  questions  of  ownership  and  posses- 
sion arise,  the  Minister  shall  suspend  the  course  of  the  adminis- 
trative proceedings,  'and  shall  refer  the  parties  to  the  ordinary 
courts  in  order  that  they  may  establish  the  rights  to  which  they 
believe  themselves  entitled. 

The  lapsing  may  be  declared  de*  oficio  by  the  Administration 
when  it  is  possessed  of  the  necessary  data  for  doing-  it. 

Three  months  having  passed  from  the  publication  in  the  Bole- 
tin  de  la  Propiedad  Intelectual  e  Industrial  of  the  lapsing  of  the 
registration  of  a  mark,  this  distinctive  sign  shall  remain  free,  at 
the  disposition  of  whoever  may  desire  to  adopt  it  and  to  solicit 
a  new  registration  in  his  name  according  to  the  present  law. 

Classification* 

FIRST  GROUP — AGRICULTURE  AND  ALIMENTATION. 
CLASS  1.  Farming  implements,  agricultural  machines. 
CLASS  2.  Manures,  fertilizers,  latrines,  insecticides. 


SPAIN  473 

CLASS  3.  Agricultural  and  forestry  exploitations,  cattle  rais- 
ing. 

CLASS  4.  Horticulture,  gardening,  agriculture  and  sericul- 
ture. 

CLASS  5.  Cereals,  milling,  bread  making,  pastes  and  starches. 

CLASS  6.  Food  substances  and  preserves,  receptacles. 

CLASS  7.  Sugars,  coffees,  chocolates,  pastry,  confectionery, 
syrups. 

CLASS  8.  Vine  culture,  wines,  beers,  vinegars. 

CLASS  9.  Distilling,  alcohols,  spirits,  liquors. 

CLASS  10.     Gaseous  drinks,  artificial  ice,  refrigerators. 

SECOND  GROUP — MINING  AND  METALLURGY. 

CLASS  1.  Exploitation  of  mines,  quarries,  baths  and  mineral 
waters. 

CLASS  2.  Combustibles,   hydrocarbons  and   agglomerates. 

CLASS  3.  Industrial  furnaces  and  kilns,  gasogenes. 

CLASS  4.  Smelting  and  manufacture  of  iron  and  steel. 

CLASS  5.  Forging,  rolling  and  tempering  iron  and  steel. 

CLASS  6.  Various  metals,  alloys,  amalgams. 

CLASS  7.  Wires,  needles,  pins,  nails. 

CLASS  8.  Cables,  chains,  metallic  textures. 

CLASS  9.  Sheet  iron,  tin  plates  and  beaten  tin. 
CLASS  10.     Tools,  implements,  machines. 

THIRD  GROUP — MOTORS  AND  MACHINES. 

CLASS  1.  Motors  for  muscular  force. 

CLASS  2.  Air  motors,  windlasses. 

CLASS  3.  Hydraulic  motors. 

CLASS  4.  Gas  and  various  motors. 

CLASS  5.  Steam  motors. 

CLASS  6.  Steam  generators,  boilers  in  general. 

CLASS  7.  Accessories  for  motors  and  steam  generators. 

CLASS  8.  Organs  of  transmission  and  similar  articles. 

CLASS  9.  Compressing  presses,  filter-presses. 

CLASS  10.     Various  machines  and  apparatus. 

FOURTH  GROUP — CHEMICAL  INDUSTRIES. 

CLASS  1.  Illuminating  gas  and  its  accessories. 

CLASS  2.  Oils  and  fats,  candles,  soaps,  lye. 

CLASS  3.  Wax  chandlery,  perfumery,  essences. 

CLASS  4.  Gums,  resins,  varnishes,  caoutchoucs,  japans,  gut- 
tapercha. 

CLASS  5.  Colors,  dyeing  materials,  inks,  mordants,  driers, 
enamels. 

CLASS  6.  Albumen,  gelatine,  glues. 


4/4  SPAIN 

CLASS  7.  Hides  and  skins,  tanned  leather,  leather  straps, 
blacking. 

CLASS  8.  Paper  of  all  kind,  card  board. 

CLASS  9.  Painted  papers,  cigarette  paper. 

CLASS  10.  Chemical,  pharmaceutical  and  various  products 
and  processes. 

CLASS  11.  Explosives  for  industrial  uses. 

FIFTH  GROUP — TEXTILES  AND  CLOTHING. 

CLASS  1.     Defibration,   preparation,   spinning  and  twisting. 
CLASS  2.     Woven  goods  of  all  kinds. 
CLASS  3.     Stiffening,  bleaching,  dyeing,  printing. 
CLASS  4.     Knitted  goods,  nets  or  webs. 
CLASS  5.     Tulles,  embroidery,  laces,  silk  laces. 
CLASS  6.     Sewing  machines,  braiding  machines,  etc. 
CLASS  7.     Linen  goods,  corsets,  dresses,  hats. 
CLASS  8.     Fancy  trimming,  haberdashery,  gloves,  ties. 
CLASS  9.     Umbrellas,  canes,  fans,  flowers  and  feathers. 
CLASS  10.     Footwear,  cordage,  articles  made  of  Spanish  grass 
hemp,  mats. 

SIXTH   GROUP — LIBERAL   ARTS — DOMESTIC   ECONOMY   AND 
SMALL  INDUSTRIES. 

CLASS  1.  Works  of  art.  engraving  and  photography. 

CLASS  2.  Typography,  lithography  and  their  derivatives. 

CLASS  3.  Music,  instruments  and  accessories. 

CLASS  4.  Jewelry,  hardware,  and  writing  and  drawing  ma- 
terials. 

CLASS  5.  Furniture,  upholstery,  decorations  and  material  for 
teaching  gymnasia. 

CLASS  G.  Culinary  art,  domestic  chattels,  kitchen  utensils. 

CLASS  7.  Cutlery,  table  articles,  bottling  corks. 

CLASS  8.  Basket  making,  Morocco  leather,  turning,  card- 
board and  other  boxes. 

CLASS  9.  Tobacco,  phosphorus,  articles  for  smokers. 

CLASS  10.     Toys,  dolls,  sundry  industries. 

SEVENTH  GROUP — ELECTRICITY  AND  SCIENTIFIC  INSTRUMENTS. 

CLASS  1.  Products,  accumulators,  conductors,  lightning  con- 
ductors. 

CLASS  2.  Electric  lighting,  electric  traction. 

CLASS  3.  Telegraphy,  telephones. 

CLASS  4.  Various  electric  apparatus. 

CLASS  5.  Watch-making,  instruments  of  precision. 

CLASS  6.  Meters  of  all  kinds,  caligraphic  apparatus. 

CLASS  7.  Testing  apparatus,  pharmaceutical  accessories. 

CLASS  8.  Medical  and  surgical  instruments  and  apparatus. 


SPAIN  475 

CLASS  9.  Physical,  chemical,  astronomical  and  geodetical  in- 
struments. 

.     CLASS  10.     Weights  and  measures  and  instruments  for  weigh- 
ing. 

EIGHTH  GROUP — CONSTRUCTION. 

CLASS  1.  Materials :  timber,  lime,  cement,  asphalt,  artificial 
stone. 

CLASS  2.  Ceramics,  bricks  and  tiles,  pottery,  earthenware, 
porcelain,  glass. 

CLASS  3.  Locks,  carpentry,  cabinet  making,  Venetian  blinds. 

CLASS  4.  Bridges,  roofs,  enclosures,  pavements. 

CLASS  5.  Foundations,  dredging,  sounding,  perforating. 

CLASS  6.  Construction,  architectural   works,  scaffolding. 

CLASS  7.  Heating,   ventilation,   lighting,    sanitation. 

CLASS  8.  Lifting  apparatus,   capstans,  lathes,   elevators. 

CLASS  9.  Raising  and  conducting  of  water  and  other  fluids. 

CLASS  10.  Fire  extinguishing  materials,  incombustible  prod= 
ucts. 

NINTH  GROUP — VETERINARY  SCIENCE,  HUNTING,  FISHING  AND 
TRANSPORTATION. 

CLASS  1.  Veterinary  science,  domestic  animals. 

CLASS  2.  Aviculture,  hunting,  utensils. 

CLASS  3.  Pisciculture,  fishing,  apparatus. 

CLASS  4.  Carriage-making,  velocipedes  (bicycles). 

CLASS  5.  Harness  and  accessories. 

CLASS  6.  Railways,  stationary  and  rolling  material. 

CLASS  7.  Sea  and  river  navigation. 

CLASS  8.  Aerial  navigation,  parachutes. 

CLASS  9.  Life-saving,  safety  and  swimming  apparatus. 

CLASS  10.  Transportation   and    funeral   effects. 

TENTH  GROUP — MILITARY  ART. 

CLASS  1.  Powders  and  explosives. 

CLASS  2.  Cartridges  and  projectiles. 

CLASS  3.  Portables  and  other  fire-arms. 

CLASS  4.  Guns  and  carriages. 

CLASS  5.  Batteries  and  armors. 

CLASS  6.  Torpedoes  and  torpedo  boats. 

CLASS  7.  War  vessels. 

CLASS  8.  Sanitary  material. 

CLASS  9.  Field  material. 

CLASS  10.  Equipment,  various  articles. 
Marking  Goods  :    "Marca  Registrada." 


476  SPAIN 

Indications  of  Origin. 

It  is  understood  by  indication  of  origin  the  designation  of  a 
geographical  name,  as  a  place  of  the  manufacture,  elaboration  or 
extraction  of  a  product. 

The  name  of  a  place  of  production  belongs  collectively  to  all 
the  producers  that  are  established  in  it. 

No  one  has  a  right  to  use  the  name  of  a  place  of  manufacture 
in  order  to  designate  a  natural  or  manufactured  product  coming 
from  another  place. 

Falsity  of  indication  of  origin  is  not  incurred  when  a  geo- 
graphical name  is  used  for  the  denomination  of  a  product, 
which,  being  already  generic,  indicates  in  commercial  language 
the  nature  and  name  of  origin  of  the  product.  This  exception 
is  not  applicable  to  the  products  of  the  vine. 

Foreign  products  with  the  marks  of  Spanish  producers  re- 
main prohibited  and  will  be  seized  upon  their  entrance  at  Span- 
ish custom  houses,  and  whether  the  marks  are  completely  new 
or  constitute  a  modification  or  falsification  of  registered  marks, 
the  proprietors  of  the  false  marks  retaining  the  rights,  that  the 
law  recognizes. 

Goods  manufactured  either  in  Spain  or  in  foreign  countries, 
may  bear,  respectively,  the  name  or  mark  of  a  foreign  or  Span- 
ish merchant,  on  condition  that  the  indications  of  the  country 
of  manufacture,  or  of  production,  are  plainly  visible  and  that 
the  proper  authorization  for  using  them  has  been  obtained. 

Notwithstanding  the  provisions  in  the  preceding  article,  the 
courts  shall  consider  as  a  presumption  of  false  indication  of 
origin  the  fact  that  objects  imported  from  a  foreign,  country  not 
being  Spanish-American,  bear  a  Spanish  mark  or  inscription  in 
the  Spanish  language.  If  the  products  imported  from  a  foreign 
country  bear  a  name  of  origin  that  is  identical  with  or  similar 
to  that  of  a  place  within  Spanish  territory,  such  name  must  be 
followed  by  the  name  of  its  nation. 

Unfair  Competition. 

It  is  understood  by  unfair  competition  all  efforts  to  avail  one- 
self unfairly  of  the  advantages  of  an  industrial  or  commercial 
reputation  acquired  by  the  efforts  of  another  who  may  have  his 
property  protected  by  the  present  law. 

The  following  are  considered  as  acts  constituting  unfair  com- 
petition : 

(a)  The  imitation  of  the  address-plates  or  show-bills  of  shop 
windows,  facades,  furniture,  or  anything  else  that  may  give  rise 
to  confusion  with  another  establishment  of  the  same  class  con- 
tiguous or  very  close  by. 

(b)  The  imitation  of  the  wrappers  used  by  a  competitive 
house  in  such  a  form  that  it  may  induce  to  confusion. 


SPAIN  477 

(c)  To  select  as  a  firm  name  a  title  in  which  is  included  the 
name  of  a  locality  known  for  the  existence  of  a  renowned  estab- 
lishment with  the  object  of  illicitly  availing  oneself  of  its  reputa- 
tion. 

(d)  To   knowingly    disseminate    false    assertions    against   a 
rival  with  the  object  of  depriving  him  of  his  clients. 

(e)  To    publish    advertisements,    announcements    or    news- 
paper articles  which  tend  to  depreciate  the  quality  of  the  prod- 
ucts of  a  competitor. 

(f)  To  advertise  oneself  in  a  general  way  and  contrary  to 
the  reality  of  the  facts  as  the  depository  of  a  national  or  foreign 
product. 

(g)  The  employment,   without   competent  authorization,   of 
indications  or  terms  such  as  "prepared  according  to  the  formula 
of"  or  "prepared  according  to  the  process  of  manufacture  of" 
unless  the  formula  or  the  process  belongs  to  the  public  domain. 

Jurisdiction. 

Civil  actions  in  matters  of  industrial  property  shall  be  insti- 
tuted in  the  domicile  of  the  defendant.  If  the  claim  is  directed 
at  the  same  time  against  the  grantee  of  the  right  to  the  title  rela- 
tive to  such  property  and  one  or  more  of  his  grantees  or  agents, 
the  competent  Judge  or  Court  will  be  that  of  the  domicile  of 
the  grantee.  If  the  claim  is  set  up  against  two  or  more  grantees 
or  agents  the  competence  of  the  Court  shall  be  determined  by 
the  domicile  of  any  one  of  them,  at  the  election  of  the  plaintiff. 

In  criminal  actions  and  proceedings  the  competency  is  regu- 
lated by  the  provisions  referring  to  legal  proceedings  of  this 
order. 

Civil  claims  are  adjusted  by  the  rules  prescribed  by  the  law  of 
civil  proceedings,  according  to  their  importance,  criminal  actions 
by  those  that  the  law  provides  for  criminal  procedure. 

In  all  judicial  actions  that  have  for  their  object  to  declare  the 
nullity  or  lapsing  of  a  trade  mark,  the  Public  Prosecutor  shall  be 
a  party. 

In  the  case  of  the  preceding  article,  all  those  deriving  rights 
from  the  registrant,  according  to  the  Registry  of  Industrial 
Property,  must  be  summoned  before  the  legal  tribunal. 

As  soon  as  the  nullity  or  lapsing  is  judicially  declared  of  a 
trade  mark,  the  Court  shall  communicate  the  sentence  that  it  may 
have  caused  to  be  executed  to  the  Ministry  in  order  that  it  may 
take  cognizance  of  it,  and  the  nullity  or  lapsing  may  be  pub- 
lished in  the  Boletin  in  the  same  terms  and  at  the  proper  time 
that  this  law  orders  for  the  publication  of  trade  marks. 

Fees. 

The  registration  of  a  mark  will  be  subject  to  the  payment  of 
a  tax  of  100  pesetas  in  stamped  paper  to  the  State,  that  is  to  be 
satisfied  for  periods  of  five  years  and  progressively,  in  this  form : 


478  SPAIN 

That  of  the  first  five-year  period,  which  will  be  10  pesetas  for 
trade  marks,  will  be  payable  within  fifteen  days  of  the  publica- 
tion of  the  concession  of  the  mark;  those  of  the  three  remain- 
ing five-year  periods  are  to  be  satisfied  before  the  termination 
in  each  year  of  that  month  in  which  the  certificate  was  issued, 
paying-  20  pesetas  in  the  second  five-year  period,  30  in  the  third 
and  40  in  the  fourth. 

The  fact  of  not  paying  any  of  the  taxes  set  forth  in  the  pre- 
ceding article  will  be  considered  as  a  renunciation  on  the  part  of 
the  interested  party  of  the  benefits  of  the  registration  and  in 
virtue  thereof  the  same  will  be  forfeited. 

Trade  Names. 

By  trade  name  is  understood  the  name,  firm  name,  or  designa- 
tion under  which  an  agricultural,  manufacturing  or  mercantile 
establishment  is  made  known  to  the  public. 

The  following  shall  be  considered  as  the  name  of  an  agricul- 
tural, manufacturing  or  mercantile  establishment: 

(a)  The  surnames,  with  or  without  the  Christian  name,  in 
full  or  abbreviated,  of  agriculturists,   of  manufacturers,  or  of 
the  merchants  that  possess  them. 

(b)  Styles  or  signatures  of  firms. 

(c)  The  designations  of  mercantile  companies  in  all  their 
forms. 

(d)  Fancy  or  especial  designations;  and 

(e)  The  designations  of  lands,  destined  for  agricultural,  in- 
dustrial or  commercial  enterprise. 

Independently  of  the  mercantile  registration  of  which  Article 
16,  of  the  Code  of  Commerce  treats,  all  agriculturists,  industrials 
or  merchants,  Spanish  or  foreigners  domiciled  in  Spain,  may 
request,  individually  or  collectively,  the  inscription  in  the  regis- 
ter of  industrial  property,  of  his  respective  trade  name. 

The  registration  of  a  trade  name  is  effective,  but  will  only 
constitute  this  exclusive  ownership  by  means  of  this  procedure, 
which,  from  the  date  of  the  inscription,  will  produce  legal  effects. 

When  a  name  or  a  denomination  is  employed  at  the  same  time 
as  a  mark  and  as  a  trade  name,  it  must  be  entered  separately  in 
the  two  registers,  because  the  first  represents  the  distinctive 
mark  for  the  objects  elaborated  and  offered  to  the  consumer, 
and  the  second  is  only  applied  to  the  samples  or  showbills,  cases 
and  other  accessories  used  in  order  to  distinguish  the  establish- 
ment. 

The  registration  of  a  trade  name  will  be  denied: 

(a)  When  the  name,  firm  name  or  denomination  is  not  dis- 
tinguished sufficiently  from  another  trade  name  already  regis- 
tered. 

(&)  When  without  the  express  consent  of  the  proprietor  of 
a  trade  name  already  registered,  accredited  by  a  legal  document, 


SPAIN  479 

these  words  are  used:  "formerly  establishment  of — ,"  "former- 
ly factory  of — ,"  "formerly  manager  of — ,"  "formerly  chief  of 
the  workshop  of — ,"  "employe  of — ,"  <  ex-director  of — ,"  etc., 
"successor  or  successors  of — ,"  "branch  office  of — ,"  or  "repre- 
sentative of — ,"  or  other  similar  terms. 

If  for  any  of  these  motives  or  on  account  of  opposition  in 
accordance  with  the  preceding-  paragraph,  the  petition  for  regis- 
tration is  not  acceded  to,  the  interested  party  will  be  notified  to 
the  end  that  he  may  modify,  complete  or  retire  his  petition. 

The  possessor  of  a  certificate  of  registration  of  a  trade  name 
is  the  only  one  that  may  add  to  his  name  the  mention  of  '"regis- 
tered." 

The  modifications  and  changes  of  a  trade  name  will  be  the 
object  of  a  new  registration. 

The  possessor  of  a  registered  trade  name  has  the  same  rights 
that  belong  to  the  possessor  of  a  registered  mark. 

Law  in  Force  in  Spain  to  Prevent  the  Sale  or  Importation  of 
Goods  Bearing  a  False  Indication  of  Origin. 

No  special  steps  are  taken  to  prevent  the  importation  of  goods 
bearing  a  false  indication  of  origin ;  but  the  stipulation  of  the 
Convention  of  Paris  (1883),  the  Arrangement  of  Madrid  for 
the  prevention  of  false  indications  of  origin  (1891),  and  the  Ad- 
ditional Acts  of  Brussels  (1900)  are  generally  in  force.  The 
importation  of  goods  bearing  a  false  indication  of  Spanish  origin 
or  bearing  falsified  or  imitated  Spanish  trade  marks  is  prohibited 
by  the  Law  of  Industrial  Property  (1902).  This  law  also  pro- 
hibits the  use  of  the  name  of  a  place  of  manufacture  to  desig- 
nate a  manufactured  or  natural  product  coming  from  another 
place.  The  sale  of  articles  bearing  a  false  Spanish  trade  mark 
is  a  punishable  offense  under  the  Penal  Code.  Foreigners,  whose 
States  are  not  members  of  the  Industrial  Property  Union  only 
possess  trade  mark  rights  in  virtue  of  special  treaties,  and  in 
cases  where  there  are  no  treaties,  the  principle  of  reciprocity  is 
observed.  At  the  demand  of  an  interested  party,  a  fine  may  be 
imposed  on  persons  employing  false  indications  of  origin.  Civil, 
or  criminal  actions  may  be  brought  against  infringers  of  Span- 
ish trade  marks.  The  cost  of  a  civil  action  would  be,  at  most, 
between  $1,000  and  $1,400;  of  a  criminal  action  nil,  as  the 
States  prosecute.  Goods  manufactured  either  in  Spain  or  abroad 
may  bear  respectively  the  name  or  mark  of  a  foreign  or  Spanish 
merchant,  provided  the  indication  of  the  country  of  manufac- 
ture is  clearly  visible  and  that  the  proper  permission  to  use  the 
name  or  mark  has  been  obtained. 

Infringement. 

The  following  shall  be  punished  with  a  fine  of  from  twenty- 
five  to  125  pesetas : 

(1)     Those  who  use  a  mark  or  an  industrial  design  or  model 


480  SPAIN 

without  possessing  the  corresponding  certificate  of  ownership, 
allowing  it  to  be  inferred  by  using  the  word  "registered,"  or  any 
similar  word,  that  they  possess  such  a  certificate. 

(2)  Those  who  being  legitimately  owners  of  a  mark,  apply 
it  to  articles  different  from  those  for  which  it  was  granted. 

(3)  Those  who  having  changed  the  total  or  partial  config- 
uration of  the  mark,  design,  or  model,  apply  to  it  the  expression 
"registered,"  or  a  similar  expression,  without   having  actually 
registered  the  modification. 

(4)  Those  who  remove  from  goods  the  marks  of  the  pro- 
ducer without  his  express  consent,  in  order  to  deal  with  these 
goods,  although  they  do  not  apply  said  marks  to  other  goods. 

Second  offenses,  by  which  is  understood  offenses  by  persons 
punished  for  the  same  offense  within  the  preceding  five  years, 
shall  be  punished  with  a  fine  of  from  125  to  250  pesetas. 

In  case  of  insolvency,  an  offender  shall  suffer  corresponding 
imprisonment,  according  to  Article  50  of  the  Penal  Code.  (Art. 
136.) 

Any  person  using  forbidden  marks  shall  be  punished  with  a 
fine  of  from  250  to  500  pesetas.  (Art.  137.) 

Trade  Mark  Rights  Under  the  Spanish  Law. 

The  first  Spanish  trade  mark  law,  that  of  November  20,  1850, 
provides  that,  so  far  as  concerns  the  operation  of  that  law,  only 
those  marks  shall  be  considered  as  marks  in  use,  for  which 
certificates  of  registration  have  been  obtained.  An  eminent 
Spanish  commentator  says  regarding  this  section,  while  the  use 
of  marks  for  which  no  registration  has  been  obtained  is  not  pro- 
hibited in  the  country,  no  right  is  acquired  by  such  use.  The 
certificate  of  registration  alone  confers  the  right  to  the  mark  in 
the  country  and  in  the  colonies,  and  authorizes  the  prosecution  of 
civil  actions  and  criminal  proceedings,  against  those  who,  in 
any  manner,  infringe  upon  the  industrial  property  right  thereby 
secured. 

By  royal  ordinance  of  April  11,  1858,  the  property  in  trade 
marks  was  declared  similar  to  that  in  movable  property.  This 
ordinance,  however,  had  to  do  primarily  with  the  assignability 
of  trade  marks.  A  petition  having  been  made  by  an  association 
of  paper  manufacturers  of  Alcoy,  requesting  that  the  titles  to 
trade-marks,  granted  under  the  law  or  1850,  be  declared  assign- 
able like  any  other  property  right,  a  royal  ordinance  was  issued, 
construing  the  law  in  this  particular.  After  reciting  the  facts 
above  mentioned,  this  ordinance  stated  that  no  such  declaration 
as  that  sought  was  necessary ;  that  the  law  of  1850  assimilated 
the  right  in  trade  marks,  that  were  registered  and  authorized  by 
law,  to  that  in  personal  property  and,  therefore,  such  marks 
were  capable  of  being  conveyed  or  assigned,  like  any  other  species 


SPAIN  481 

of  personal  property.  It  was  accordingly  decreed,  that,  for  the 
information  of  the  administration  and  the  better  protection  of 
assignees,  any  devolution  of  title  to  a  trade  mark  should  be 
recorded,  within  the  period  of  three  months  after  the  event. 

The  supreme  court  of  justice,  by  a  decision  of  May  5,  1887, 
declared  that : 

"Marks  of  trade  and  of  commerce  constitute  a  species  of 
industrial  property,  as  legitimate  and  reputable  as  the  others 
which  the  law  recognizes,  and  the  law  consents  neither  to  the 
use  of  such  marks,  with  indications  calculated  to  mislead  the 
purchaser  as  to  the  character  of  the  product,  nor  to  the  imita- 
tion thereof,  in  such  a  manner  that  one  may  be  led  into  confu- 
sion, or  error,  by  mistaking  the  imitation  for  the  genuine  mark." 

In  a  decree  of  the  same  court,  of  December  14,  1887,  it  was 
recited  that: 

"Names  and  industrial  devices,  like  marks  of  trade  and  com- 
merce, are  the  symbol  of  credit  of  the  person  or  company  to 
whom  they  belong,  and  constitute  a  species  of  property,  as  leg- 
itimate and  respectable  as  the  others  recognized  by  law,  and  in 
view  of  this  fact,  neither  does  the  law  consent  to  the  usurpation 
of  such  marks  or  commercial  mottoes,  nor  is  it  lawful  to  aim  at 
their  imitation,  with  alterations  or  additions  more  or  less  inten- 
tional, which  visibly  tend  to  deceive  or  lead  into  error  the  in- 
experienced purchaser,  as  to  the  nature  and  source  of  the  thing 
or  object  sold." 

The  same  court,  on  February  27,  1890,  further  remarked,  cit- 
ing the  preceding  cases : 

"If  the  name  of  an  industrial  establishment  is  the  symbol  of 
its  credit  and  constitutes  a  species  of  property,  as  legitimate  and 
reputable  as  any  recognized  by  the  law,  it  is  obvious  that  the 
a^nellant  has  no  right  to  use  upon  his  shop  located  in  one  of  the 
streets  of  the  capital,  the  name,  "Bake  Shop  of  Batin,"  which  is 
the  name  of  the  establishment  of  the  appellee,  previously  located 
in  another  portion  of  the  city ;  and  that,  for  the  same  reason, 
he.  has  no  right  to  employ  the  name  of  Batin  upon  his  labels, 
bill  heads  and  stationery ;  for  the  reason  that  the  use  of  this 
name,  which  is  an  indication  of  origin,  and  which  really  con- 
stitutes the  mark  of  distinction  of  the  older  establishment,  may 
lead  the  consumer  to  error  and  cause  the  one  shop  to  be  confused 
with  the  other."  (Dindurra,  Marcas  de  Fabrica  y  de  Comercio, 
Madrid,  1892,  pp.  34,  40,  157,  175,  187.) 

Under  date  of  May  16,  1902,  the  present  trade  mark  law  of 
Spain  came  into  force.  This  law  recites  that  the  right  of  prop- 
erty in  marks  is  equivalent  to  the  right  of  property  in  personality, 
that  the  manner  of  acquiring  this  property  is  that  recognized  by 
the  civil  law ;  but,  to  enjoy  the  benefits  of  the  present  law,  it  shall 
be  necessary  to  obtain  a  certificate  of  registration  of  the  trade 
mark  in  the  manner  prescribed. 

31 


482  SPAIN 

The  civil  court  of  Barcelona,  under  date  of  April  14,  190  i, 
passed  upon  an  application  for  the  cancellation  of  a  registered 
mark,  at  the  suit  of  another  who  had  not  registered  his  mark, 
but  who  claimed  to  be  the  lawful  owner  thereof,  by  virtue  of 
priority  of  use.  The  decision  contained  the  following  language: 

"Considering  that  the  contention  of  the  defendant  (pursuant  to 
which  the  plaintiff  company,  not  having  caused  its  mark,  "The 
Eagle,"  to  be  registered,  must  be  deprived  of  all  action  and  can 
have  no  right  to  prevent  a  third  person  from  making  use  of  the 
same  mark)  can  not  be  taken  into  account,  .since  the  action 
instituted  by  this  company  has  for  its  purpose,  not  the  prosecu- 
tion of  a  third  person,  who  has  employed  the  mark  and  from 
whom  it  seeks  to  recover  damages ;  but  is  confined  solely  to 
asserting  its  civil  right  of  property  in  this  mark,  and  to  de- 
manding the  annullment  of  a  title,  which  the  company  consider 
as  illegal,  as  well  as  the  cancellation  of  the  registration  made  in 
favor  of  the  defendant ; 

And  considering  the  fact  that  the  property  in  marks  of  trade 
and  commerce  is  assimilated  to  the  property  in  movable  goods, 
that  a  title  by  prescription  is  given  by  possession  in  good  faith, 
without  interruption,  during  three  years,  as  well  as  by  the  un- 
interrupted possession  during  six  years  under  any  circumstances : 
It  is  evident  not  only  that  the  plaintiff  company  has  the  right  to 
require,  as  it  has  done,  the  cancellation  of  the  trade  mark  reg- 
istered and  of  which  the  representation  of  an  eagle  is  the  prin- 
cipal element,  but  also  that  it  ought,  for  the  same  reason,  to  be 
discharged  of  liability,  under  the  counterclaim  interposed  by 
the  defendant."  (Fabriques  Reunies,  etc.,  vs.  Serra  et  Planchon, 
La  Propriete  Industrielle,  1905,  p.  25.) 

In  remarking  upon  this  case,  the  editor  of  La  Propriete  In- 
dustrielle, says,  it  has  been  generally  considered,  up  to  the  present 
time.  that,  in  Spain,  one  can  acquire  no  right  to  a  mark  outside 
registration.  The  right  to  a  mark  has  been  treated  as  assimilated 
to  that  in  personal  property,  under  the  old  law  as  under  the  new ; 
but  it  was  supposed  that  this  principle  applied  only  to  the  trans- 
mission of  the  mark,  and  not  to  its  acquisition  by  priority  of  use. 
The  above  judgment  which,  by  the  failure  to  appeal,  has  become 
law,  is  based  upon  a  different  doctrine,  that  may  be  summarized 
as  follows:  Only  the  registration  of  the  mark  gives  a  right  of 
action  for  infringement  and  for  the  recovery  of  damages ;  but 
priority  of  use  confers  upon  the  first  user  the  right  to  the  mark, 
and  enables  the  latter  to  establish  the  right  to  his  mark,  unlaw- 
fully registered  in  favor  of  the  third  party,  and  to  demand  the 
cancellation  of  such  wrongful  registration.  This  right  of  action 
is  lost  by  prescription  in  three  years,  or  in  six  years,  after  the 
misappropriation  of  the  mark  by  the  third  person,  the  period 
depending  upon  the  conditions  recited  in  the  above  decision. 


SPAIN  483 

Priority  of  Use. 

Although  it  has  been  commonly  understood  that  the  law  for 
the  registration  of  trade  marks  in  Spain  made  the  right  to 
exclusive  use  dependent  upon  registration,  a  recent  decision  of 
the  Circuit  Court  of  Barcelona  has  somewhat  modified  the  appli- 
cation of  this  rule  in  favor  of  the  prior  owner  of  a  mark  who 
has  been  anticipated  in  the  registration  by  another  and  wrongful 
user  thereof. 

La  Propriete  Industrielle  discusses  fully  the  effect  of  this  deci- 
sion and  states  its  effect  to  be  that  the  registration  of  the  mark 
is  essential  to  the  prosecution  of  an  action  for  infringement  or 
to  the  recovery  of  damages,  but  that  priority  of  use  gives  a 
right  to  the  mark  which  enables  the  first  user  to  procure  the 
cancellation  of  any  wrongful  registration  of  his  mark  by  another 
in  the  Federal  register.  This  action  after  the  analogy  of  the 
statute  of  limitations  applicable  to  personal  property,  is  lost  in 
three  years,  when  the  claim  of  the  registrant  is  made  in  good 
faith  and  without  the  knowledge  of  the  rights  of  the  prior  user, 
and  in  any  event  in  six  years,  after  registration  of  the  mark  by 
another.  (Fabriques  c.  Serra  et  al.,  La  Propriete  Ind.,  1905, 
p.  25.) 

Marks  in  Foreign  Languages. 

The  Spanish  law  for  the  registration  of  trade  marks  provides 
that  descriptions  of  marks  registered  shall  be  given  in  the 
Spanish  language.  The  question  has  arisen  in  the  office  of 
registration  whether  this  requires  that  all  marks  themselves 
should  be  in  the  Spanish  language.  The  Council  of  State  under 
date  of  November  13,  1905,  issued  a  decree  construing  the  pro- 
visions of  the  law  in  this  respect.  In  this  decree,  the  council 
says,  in  substance:  Neither  the  registration  office  nor  the  regis- 
trants have  ever  interpreted  this  provision  in  the  sense  that  the 
mark  itself  must  be  written  in  the  Spanish  language,  and  a  great 
many  marks  in  foreign  languages  have  been  registered  under  the 
law.  The  same  is  true  in  foreign  countries.  None  of  them 
prohibits  absolutely  the  use  of  marks  consisting  of  words  or 
phrases  not  belonging  to  the  language  of  the  country.  Con- 
sideration of  good  faith  and  liability  to  deception  have  come,  how- 
ever, to  have  a  controlling  influence  in  all  countries,  with  a  view 
to  causing  marks  so  far  as  possible  to  conform  with  the  facts 
and  to  avoid  deception.  Thus  alone  is  it  possible  to  put  an  end 
to  that  species  of  unfair  competition,  unfortunately  very  common, 
through  which  the  reputation  of  a  region  or  a  manufacturer  is 
misappropriated  by  a  mark  giving  a  misleading  impression  as  to 
the  source  of  production  or  manufacture.  The  interest  of  Spain 
in  this  question  consists  in  the  fact  that  marks  placed  upon 
products  of  Spanish  origin  should  show  the  source  of  produc- 
tion and  should  not  be  permitted  to  be  so  used  as  to  mislead. 


484  SPAIN 

It  is  the  opinion  of  the  Council  of  State,  therefore,  that  the 
provision  permitting  marks  to  be  set  forth  in  a  foreign  language 
should  be  subject  to  this  qualification,  that  the  mark  should  not 
be  such  as  to  convey  false  information  as  to  the  origin  or  source 
of  production  of  the  product.  Accordingly  the  Council  instructs 
the  registration  office  that  native  registrants  of  such  marks  shall 
indicate  upon  their  marks  in  a  conspicuous  place  and  in  distinct 
characters,  the  locality  in  Spain  where  the  product  is  manu- 
factured, together  with  the  name  of  the  manufacturer;  that 
marks  complying  with  these  conditions  be  passed  without  delay, 
but  that  others,  where  the  applicant  refuses  to  comply  with  these 
requirements,  be  rejected.  (La  Propriete  Industrielle,  1906,  p. 
128.) 

The  Trade  Name  "Toledo"   Upon  Cutlery. 

The  Spanish  customs  authorities  have  seized  in  the  customs 
house  cutlery  of  German  make  bearing  the  name  "Toledo."  This 
action  was  taken  under  the  authority  of  the  Spanish  law  which 
forbids  the  use  of  the  name  of  a  place  or  locality  upon  a  natural 
product  or  article  of  manufacture  made  or  produced  in  a  different 
place  or  locality.  Under  the  Spanish  law  the  right  to  the  use 
of  a  geographical  name  is  common  to  all  producers  located  in 
the  place  or  territory  designated  thereby.  Goods  so  marked  as 
to  falsely  indicate  a  place  or  region  in  Spain  as  that  of  origin 
are  subject  to  seizure  upon  importation.  This  legislation  is  a 
local  application  of  the  terms  of  the  international  agreement 
concluded  in  1891  at  Madrid,  and  to  which  France,  Great  Britain, 
Spain,  Portugal,  Switzerland,  Brazil  and  Tunis  are  parties,  aimed 
at  the  suppression  of  false  marks  of  origin.  By  this  convention 
each  country  undertook  to  prevent  within  its  own  territory  the 
use  of  marks  of  origin  falsely  referring  to  places  or  localities 
within  any  of  the  other  countries  to  the  union.  An  exception 
is  made  in  the  case  of  names  which  have  come  to  have  a  generic 
significance  as  applied  to  goods,  having  lost  their  force  as  indica- 
tions of  origin. 

Cancellation  of  Registration. 

The  Spanish  law  of  industrial  property  of  1902,  provides  that 
a  registration  shall  be  extinguished  in  certain  cases,  among 
others,  by  the  death  of  the  person  in  whose  name  it  was  made 
without  the  right  of  succession  passing  to  another,  or  by  abandon- 
ment of  the  mark  during  three  years.  There  is  a  further  pro- 
vision in  the  article  that  upon  the  application  of  persons  who 
have  a  right  to  the  use  of  marks,  registrations  of  similar  marks 
already  upon  the  record  may  be  cancelled.  Under  the  latter 
clause  many  applications  were  filed  for  the  cancellation  of  marks, 
based  principally  upon  the  fact,  as  alleged,  that  the  marks  in 


ST.  HELENA  485 

question  should  not  have  been  registered  in  the  first  place,  being 
marks  common  to  the  trade,  or  that  the  mark  had  been  registered 
by  mistake,  although  so  nearly  resembling  other  marks  registered 
at  an  earlier  date  as  to  be  calculated  to  produce  confusion.  In 
this  situation  the  Bureau  of  Industrial  Property  referred  to  the 
Council  of  State  the  question  of  the  construction  of  this  clause. 
The  Council  of  State  in  an  opinion  holds  that  the  two  clauses 
above  mentioned  shall  be  construed  together,  and  that  the  pro- 
vision for  the  cancellation  of  registrations  by  the  officials  of  the 
registration  office  refers  to  marks  which  have  been  abandoned 
during  the  stated  period,  or  which  have  lapsed  by  the  death  of 
the  registrant  and  the  failure  of  succession. 

It  is  held  that  the  office  of  registration  is  not  competent  to 
correct  any  errors  that  may  have  been  made  in  the  admission 
of  the  marks  not  originally  entitled  to  registration  on  grounds 
such  as  have  been  mentioned.  Only  the  courts  of  law  have 
jurisdiction  of  controversies  arising  out  of  alleged  wrongful 
registrations.  The  duties  of  the  registration  office  are  limited 
to  the  hearing  of  evidence  where  the  facts  relied  upon  have  arisen 
after  the  registration,  and,  if  the  facts  are  proven,  declaring  the 
registration  to  have  lapsed.  (La  Propriete  Industrielle,  1906, 
p.  147.) 

Registrability  of  Insignia  of  Royalty. 

The  question  has  lately  arisen  as  to  the  registrability,  under 
the  Spanish  law,  of  two  trade  marks,  comprising,  among  other 
features,  the  representation  of  a  royal  crown.  The  Spanish  law 
provides  that  national  decorations  or  insignia  cannot  be  adopted 
as  trade  marks,  unless  their  use  be  authorized,  in  which  case 
they  can  only  be  accessory  to  the  principal  design.  In  construing 
this  clause,  it  was  held  that  inasmuch  as,  in  this  instance,  the 
representations  of  the  crown  were  only  accessory  and  combined 
with  other  and  more  distinctive  features,  there  was  no  difficulty 
in  admitting  such  marks  to  registration,  as  the  minister  could 
authorize  the  use  thereof  in  the  manner  indicated  and  register 
the  marks  accordingly.  (La  Propriete  Industrielle,  1910,  p.  61.) 

Protection  of  Trade  Marks  in  Colonial  Possessions. 

Registration  in  Spain  affords  protection  to  a  trade  mark 
throughout  her  colonial  possessions. 


ST.  HELENA 

This  island  embraces  an  area  of  47  square  miles.  The  popu- 
lation in  1911  was  estimated  at  3,800. 

The  imports  are  groceries,  wines,  beers  and  spirits,  cotton 
and  woolen  goods,  hardware,  etc.,  from  the  United  Kingdom. 

MONEY,  WEIGHTS  AND  MEASURES — Same  as  Great  Britain. 


486  ST.  LUCIA 

Laws. 

There  are  no  special  regulations  as  regards  trade  marks,  the 
laws  in  force  in  Great  Britain  being  taken  for  guidance  accord- 
ing to  paragraph  23  of  Ordinance  3  of  1885. 


ST.  LUCIA 

The  area  of  this  island  is  233  square  miles.  The  population 
in  1911  was  estimated  at  55,600. 

MONEY,  WEIGHTS  AND  MEASURES — Same  as  Great  Britain. 

Law. 
Merchandise  Marks  Ordinance,  1888,  No.  22. 

Duration. 
Fourteen  years;  renewable. 

What  May  Be  Registered. 

A  name  of  an  individual  or  firm,  printed,  impressed  or  woven 
in  some  particular  or  distinctive  manner;  or 

A  written  signature  or  copy  of  a  written  signature  of  the 
individual  or  firm  applying  for  registration  thereof  as  a  trade 
mark;  or 

A  distinctive  device,  mark,  brand,  heading,  label,  or  ticket. 

An  invented  word  or  invented  words ;  or 

A  word  or  words  having  no  reference  to  the  character  or 
quality  of  the  goods,  and  not  being  a  geographical  name. 

There  may  be  added  to  any  one  or  more  of  the  essential 
particulars  mentioned  in  this  section  any  letters,  words,  or 
figures  or  combination  of  letters,  words,  or  figures,  or  any  of 
them,  but  the  applicant  for  registration  of  any  such  additional 
matter  must  state  in  his  application  the  essential  particulars  of 
the  trade  mark,  and  must  disclaim  in  his  application  any  right 
to  the  exclusive  use  of  added  matter,  and  a  copy  of  the  state- 
ment and  disclaimer  shall  be  entered  on  the  register. 

A  person  need  not  under  this  section  disclaim  his  own  name  or 
the  foreign  equivalent  thereof,  or  his  place  of  business,  but  no 
entry  of  any  such  name  shall  affect  the  right  of  any  owner  of  the 
same  name  to  use  that  name  or  the  foreign  equivalent  thereof. 

Any  special  and  distinctive  word  or  words,  letter,  figure  or 
combination  of  letters  or  figures  or  of  letters  and  figures  used 


ST.  VINCENT  487 

as   a  trade  mark  before   August   13,   1875,  may   be   registered 
as  a  trade  mark  under  this  Act. 

Requirements. 

Authorization  to  agent  signed  by  applicant  or  applicants ;  full 
name,  address  and  occupation  of  applicant;  full  description  of 
goods  to  be  covered ;  wood  block  or  electrotype  of  the  mark, 
preferably  not  more  than  two  inches  in  breadth  and  width,  other- 
wise additional  space  is  required  for  advertising,  which  must  be 
paid  for;  six  copies  of  the  mark. 

Classification. 
Same  as  in  Great  Britain. 


ST.  VINCENT 

The  area  of  this  island  is  132  square  miles;  the  population 
in  1911  was  estimated  at  52,800.  The  principal  products  are 
cotton,  sugar  and  arrowroot. 

MONEY,  WEIGHTS  AND  MEASURES — Same  as  Great  Britain. 

Laws. 
Merchandise  Marks  Ordinance,  1888,  No.  8. 

Duration. 
Fourteen  years ;  renewable. 

What  May  Be  Registered. 

A  name  of  an  individual,  or  firm,  printed,  impressed,  or  woven 
in  some  particular  or  distinctive  manner;  or 

A  written  signature  or  copy  of  a  written  signature  of  the 
individual  or  firm  applying  for  registration  thereof  as  a  trade 
mark;  or 

A  distinctive  device,  mark,  brand,  heading,  label  or  ticket. 

An  invented  word  or  invented  words;  or 

A  word  or  words  having  no  reference  to  the  character  or 
quality  of  the  goods,  and  not  being  a  geographical  name. 

There  may  be  added  to  any  one  or  more  of  the  essential 
particulars  mentioned  in  this  section  any  letter,  words,  or  figures, 
or  combination  of  letters,  words  or  figures,  or  any  of  theirij  but 
the  applicant  for  registration  of  any  such  additional  matter  must 
state  in  his  application  the  essential  particulars  of  the  trade  mark, 


488  STRAITS  SETTLEMENTS 

and  must  disclaim  in  his  application  any  right  to  the  exclusive 
use  of  added  matter,  and  a  copy  of  the  statement  and  disclaimer 
shall  be  entered  on  the  register. 

A  person  need  not  under  this  section  disclaim  his  own  name 
or  the  foreign  equivalent  thereof,  or  his  place  of  business  but 
no  entry  of  any  such  name  shall  affect  the  right  of  any  owner  of 
the  same  name  to  use  that  name  or  the  foreign  equivalent  thereof. 

Any  special  and  distinctive  word  or  words,  letter,  figure,  or 
combination  of  letters  or  figures  or  of  letters  and  figures  used 
as  a  trade  mark  before  August  13,  1875,  may  be  registered  as  a 
trade  mark  under  this  Act. 

Requirements. 

Authorization  to  agent  signed  by  applicant  or  applicants ;  full 
name,  address  and  occupation  of  applicant;  full  description  of 
goods  to  be  covered ;  wood  block  or  electrotype  of  the  mark, 
preferably  not  more  than  two  inches  in  breadth  and  width,  other- 
wise additional  space  is  required  for  advertising,  which  must  be 
paid  for;  six  copies  of  the  mark. 

Classification. 
Same  as  in  Great  Britain. 


STRAITS  SETTLEMENTS 

The  Straits  Settlements,  constituting  together  a  single  British 
Crown  Colony,  are  situated  on  the  islands  immediately  adjacent 
to  the  Malay  Peninsula/  at  the  southern  extremity  of  which  lie 
Singapore,  the  capital  and  principal  port,  and  Penang  and 
Malacca,  the  other  ports.  The  area  of  the  colony  is  1,526  square 
miles.  A  railway  has  been  constructed  between  Singapore  and 
Kranje,  the  nearest  point  on  the  island  of  Singapore,  to  Johore 
on  the  mainland.  The  population  is  estimated  at  640,816. 

MONEY — The  Straits  Settlement  silver  dollar  of  1904  is  the 
standard  coin— 2  s.  4  d.=56  cents  U.  S. 

WEIGHTS  AND  MEASURES — Same  as  Great  Britain. 

Law. 

In  the  Straits  Settlements  there  is  no  trade  mark  law  nor  a 
trade  mark  register.  The  Merchandise  Marks  Ordinance  of  1888 
now  in  force,  refers,  in  Section  3.1,  to  the  English  Patents,  De- 
signs and  Trade  Marks  Act  of  1883,  which,  however,  never 
became  a  law  in  the  Straits  Settlements.  In  addition  the  Straits 


SUDAN  489 

Settlements  Penal  Code  of  1887  provides  in  Sections  478  and  479 
penalties  for  the  misuse  of  protected  trade  marks.  It  is,  there- 
fore, really  doubtful  whether  and  to  what  extent  trade  marks 
legally  registered  in  Great  Britain  or  other  countries  are  pro- 
tected in  the  Straits  Settlements.  The  answer  has  up  to  this 
time  been  doubtful. 

In  order  to  remedy  somewhat  the  disadvantages  arising  from 
this,  state  of  affairs  for  manufacturers  and  merchants,  the  Sing- 
apore government  has  decided  that  trade  marks  entered  in  the 
Trade  Mark  Register  in  the  Patent  Office  in  London  can  be 
recorded  in  the  Straits  Settlements  by  the  Registrar  of  Imports 
and  Exports.  This  registration  has  in  itself  no  real  effect,  but  it 
is  to  be  considered  a  means  of  proof  (subject  to  a  free  judicial 
estimate  of  its  value  as  evidence),  by  which  a  presumption  may 
eventually  be  created  that  the  mark  of  the  firm  in  question  was 
the  first  to  be  introduced  into  the  colony. 

The  registration  has  as  a  pre-requisite  the  previous  registration 
of  the  mark  in  England.  Then  the  Singapore  Registrar  of  Im- 
ports and  Exports  must  be  furnished  for  this  purpose,  a  certificate 
of  the  English  Registry,  together  with  three  facsimiles  of  the 
mark  and  one  dollar. 

By  the  Labuan  Ordinance  1907,  transferring  the  administra- 
tion of  the  government  of  the  Colony  of  Labuan  to  the  Govern- 
ment of  the  Straits  Settlements,  Trade  Marks  Ordinance,  V  of 
1902  and  IV  of  1893,  are  now  abrogated.  In  future,  trade  marks 
registered  in  the  Straits  Settlements  will  ipso  facto  extend  also 
to  Labuan. 

A  British  trade-mark  once  registered  remains  on  the  register 
without  renewal.  In  the  event  of  a  transfer  of  proprietorship, 
the  assignee  must  re-register,  and  in  addition  to  the  papers  named 
below  a  deed  of  assignment  or  other  proof  of  subsequent  pro- 
prietorship is  required. 

To  effect  registration  of  a  trade  mark  as  above  are  required 
a  certificate  of  registration  in  Great  Britain,  and  four  copies 
of  the  mark. 

To  advertise  other  trade  marks  in  the  local  papers  we  require : 
the  name,  address  and  business  of  the  proprietor,  description  of 
the  mark  and  of  the  goods  to  which  it  is  applied,  and  an  electro 
or  wood  block. 


SUDAN 

It  has  been  decided  that  all  trade  marks  for  which  protection 
has  been  obtained  in  the  Mixed  Tribunal  of  Egypt  shall  be 
equally  protected  in  Sudan ;  still  we  advise  advertisements  in  the 
Sudan  Government  Gazette,  which  has  been  held  sufficient  proof 
of  lodgment  of  claim. 


49°  SURINAM 


SURINAM 

The  area  of  Surinam  is  46,060  square  miles.  Population  is 
estimated  at  84,103.  Surinam  is  situated  on  the  coast  of  the 
Atlantic  Ocean  and  is  separated  by  two  large  rivers,  the  Marowin 
and  the  Corantin,  from  French  and  British  Guiana.  From  south 
to  north  run  the  following  rivers,  all  navigable  for  vessels:  The 
Commewine,  the  Surinam,  the  Saramiacca,  the  Coppenama  and 
the  Nickerie.  Along  the  river  banks,  in  the  alluvial  part  of  the 
country,  there  are  sugar,  cocoa,  rubber  and  coffee  plantations. 
More  to  the  south  three  regions  of  mountainous  land  furnish 
gold,  balata  and  timber. 

MONEY — Dutch  florin=100  cents=  1  s.  8  d.  (about)=40  cents 
U.  S. 

WEIGHTS  AND  MEASURES — The  metric  system. 

Law. 

Provisions  of  the  Law  of  November  9,  1893,  as  amended  by 
the  Law  of  May  31,  1905. 

Term. 
Twenty  years. 

Renewal. 

The  registration  may  be  renewed  before  the  expiration  of  the 
20-year  period  for  a  similar  term. 

Requirements. 

Registration  must  be  applied  for  at  the  branch  office  of  the 
Industrial  Property  Office  at  Paramaribo. 

Power  of  attorney  (no  legalization).  One  power  can  be  used 
for  several  applications  filed  at  the  same  time.  When  the  power 
is  signed  "pro  procura,"  proof  must  be  shown  to  the  effect  that 
the  proxy  is  authorized  to  sign  for  this  purpose. 

Ten  copies  of  the  mark. 

Electrotype  measuring  in  length  and  width  not  under  1.5  cm. 
and  not  exceeding  10  cm.  This  electrotype  is  used  for  the 
publication  of  the  registration  in  the  Gouvernements  Advertentie- 
Blad  (Official  Gazette)  of  Surinam.  The  electrotype  is  not  re- 
turned. 

Description  of  the  mark  and  a  statement  of  the  goods  for 
which  it  is  to  be  registered  and  also  the  manner  in  which  the 
mark  is  used,  and  whether  a  claim  is  made  for  its  use  in  a  par- 
ticular color  or  colors.  When  such  claim  for  a  color  or  colors 
is  made,  twenty  copies  of  the  specimen  is  required. 

A  statement  of  the  full  name,  occupation  and  postoffice  address 
of  the  applicant  is  necessary. 


SWEDEN  491 

The  formalities  and  the  procedure,  etc.,  are  substantially  the 
same  as  in  Holland,  with  the  exception  that  in  Surinam  an  appeal 
from  the  refusal  by  the  Registrar  must  be  lodged  within  a  period 
of  three  months,  and  that  there  is  no  appeal  from  the  decision 
of  the  "Raad  van  Justitie"  to  a  higher  court. 

General  Information. 

Classes  of  goods,  which  necessitate  registration  in  each  class 
separately,  do  not  exist  in  Surinam.  It  is  therefore  possible  to 
register  a  mark  for  a  great  number  of  goods  by  one  single 
application,  but  it  is  advisable  to  divide  them  into  groups  so  as  to 
obtain  broad  protection.  The  mark  can  only  be  registered  in 
respect  of  the  goods  for  which  it  is  practically  used,  and  not 
for  goods  which  the  applicant  intends  to  use  later  on.  If  the 
applicant's  name,  occupation  or  any  printed  matter  on  the  mark 
gives  rise  to  the  supposition  that  the  applicant  does  not  deal  in 
the  goods  mentioned  in  the  application,  the  Registrar  may  refuse 
registration  for  those  goods  that  do  not  fall  under  applicant's 
business. 

A  mark  composed  of  several  parts  may  be  protected  by  one 
single  registration. 

Assignments. 

For  registering  an  assignment  it  is  absolutely  necessary  that 
the  good  will  and  business  of  the  original  proprietor  of  the  trade 
mark  shall  also  be  assigned  to  the  subsequent  proprietor.  For 
assignment  the  following  documents  are  necessary : 

Power  of  attorney  (no  legalization). 

A  copy  of  the  assignment  of  the  business  of  the  proprietor. 
This  document  must  be  executed  before  a  Notary  and  legalized 
by  a  Dutch  Consul ;  it  is  not  returned. 

A  certificate  of  transfer  is  also  published  in  the  official  papers. 

A  mere  change  in  the  name  of  proprietorship  can  only  be 
recorded  in  the  trade  marks  register  by  payment  of  the  same 
government  fees  and  by  fulfilling  the  same  formalities  as  for 
assignments. 

Marking  Goods:   (See  Holland.) 


SWEDEN 

The  kingdom  of  Sweden,  consisting,  besides  several  islands, 
of  the  eastern  and  greater  part  of  the  Scandinavian  peninsula, 
extends  from  55  deg.  20  min.  18  sec.  to  69  deg.  3  min.  21  sec. 
north  latitude,  and  from  10  deg.  40  min.  to  22  deg.  30 ^  min. 
east  longitude  of  Greenwich.  The  area  of  Sweden  is  somewhat 
larger  than  that  of  Norway,  comprising  about  172,000  British 
square  miles;  its  greatest  breadth  is  266,  and  its  greatest  length 


492  SWEDEN 

1,500  British  miles,  and  the  coast  line  is  about  2,500  kilometres. 
The  population  is  estimated  to  be  about  5,476,500. 

The  manufacture  of  matches  is  a  very  considerable  industry 
of  the  country.  They  are  shipped  principally  to  Great  Britain 
and  Lubeck.  The  manufacture  of  wood  pulp  is  also  an  im- 
portant industry,  and  one  that  is  steadily  increasing,  the  material 
being  exported  to  all  paper  making  countries.  The  country  is 
very  rich  in  minerals. 

MONEY — The  krona,  which  is  divided  into  100  ore  and  is  equal 
to  1  s.  1  1/3  d.  (about)=27  cents  U.  S. 

WEIGHTS  AND  MEASURES — The  metric  system. 

•> 

Law. 

Law  of  the  5th  of  July,  1884.  Amended  the  5th  day  of  March, 
1897,  and  16th  of  June,  1905. 

Duration. 
Ten  years,  renewable  for  like  periods. 

Requirements. 

Certified  copy  of  home  registration  and  power  of  attorney,  five 
copies  of  mark  and  two  electros. 

A  trade  mark  may  not  be  registered: 

1.  If  it  consists  only  of  figures,  letters  or  words  which  are 
not  distinguished  by  such  a  characteristic  form  that  the  mark  can 
be  considered  as  a  figure  mark;  nevertheless,  registration  may 
not  be  refused  if  the  mark  consists  of  words  which  can  be  con- 
sidered as  a  specially  invented  name  for  certain  kinds  of  goods 
stated  in  the  application  in  accordance  with  Art.  3,  which  is  not 
intended  to  indicate  the  origin,  nature,  object,  quantity  or  price 
of  the  article. 

2.  If  any  other  name  or  firm  than  that  of  the  applicant,  or 
the  name  of  real  estate  of  another,  have  been  included  therein 
without  authority. 

3.  If  it  contain  public  coat  of  arms  or  stamps. 

4.  It  it  contain  representation  that  may  cause  offense. 

5.  If  it  be  altogether  identical  with  a   trade  mark  already 
registered,  or  duly  presented  for  registration,  on  behalf  of  an- 
other, or  present  such  resemblance  to  a  similar  mark  that,  not- 
withstanding  differences   in   certain    parts,   the   marks    in   their 
entirety  can  easily  be  confounded ;  nevertheless,  registration  may 
not  be  refused  if  the  resemblance  be  owing  to  such  characteristics 
as  are  concerned  under  Art.  7,  or  if  both  the  marks  concern  dif- 
ferent kinds  of  goods.     (Article  4.) 


SWEDEN 


493 


Mode  of  Application. 

.An  application  for  the  registration  of  a  trade  mark,  and  all 
other  written  documents  that  are  filed  in  cases  concerning  such 
registrations,  shall  be  indited  in  the  Swedish  language,  or,  if 
they  are  drawn  up  in  another  language,  they  shall  be  accompanied 
by  a  translation  into  Swedish  attested  by  a  Notary  Public. 

If  the  documents  are  sent  by  post,  they  shall  be  addressed  to 
Kungl.  Patent-  och  Registreringsverket,  Stockholm. 

The  application  for  registration  shall  be  accompanied  by  a 
certificate  that  the  applicant  has  fulfilled  the  conditions  required 
for  the  protection  of  the  trade  mark  in  the  foreign  state. 

An  application  for  the  registration  of  a  trade  mark  shall  fully 
and  clearly  contain  in  the  following  order: 

1.  The  applicant's  full  Christian  name  and  surname  or  firm, 
profession  and  postal  address. 

2.  A  description  of  the  mark  which  should  only  contain  what 
is  absolutely  necessary  for  characterizing  the  mark. 

3.  If  the  applicant  claim  the  right  to  the  mark  only  for  cer- 
tain goods,  a  statement  of  the  kinds  of  the  said  goods. 

4.  If  the  applicant  claim  the  right  to  the  mark  or  to  part 
thereof   as    comprising   a    specially    invented    name    for    certain 
kinds  of  goods,  a  definite  statement  concerning  the  same,  stating 
also  the  kinds  of  goods  to  which  the  name  relates. 

5.  A  list  of  all  enclosures  accompanying  the  application,  and 
signature  of  the  applicant. 

If  registration  for  several  trade  marks  be  desired,  separate 
applications  shall  be  lodged  for  each  mark. 

The  trade  mark  shall  not  be  protected  to  a  greater  extent 
or  for  a  longer  period  than  in  the  foreign  state. 

Should  the  registration  not  meet  with  any  objection,  the  mark 
shall  be  entered  in  the  register  and  advertisement,  thereof  in- 
serted without  delay  in  the  public  newspapers  and  in  a  registra- 
tion journal  published  at  the  expense  of  the  public. 

Renewal. 

The  protection  for  a  registered  trade  mark  ceases  when  appli- 
cation for  renewal  has  not  been  made,  for  the  first  time,  within 
ten  years  from  the  day  of  registration,  and  subsequently  within 
ten  years  from  the  last  renewal. 

If  any  one  be  desirous  of  renewing  the  registration,  he  shall 
deposit  or  send  in  as  prescribed  in  Art.  3,  a  written  application 
in  this  respect  enclosing  one  copy  of  such  illustration  as  is  there 
prescribed,  together  with  a  registration  fee  of  10  Kroner.  Should 
the  mark  have  been  registered  for  another  than  the  one  applying 
for  renewal,  the  right  of  the  applicant  to  the  mark  shall  also 
be  confirmed. 

The  renewal  shall  immediately  be  entered  in  the  register  and 


494  SWEDEN 

a  certificate  thereof  delivered  to  the  applicant  in  a  manner  similar 
to  that  prescribed  in  Art.  3  concerning  notices  of  receipt  men- 
tioned therein.  (Art.  9.) 

(The  registering  authority  shall  without  delay  hand  the 
applicant,  or,  if  full  address  has  been  given,  send  by  post, 
a  written  notice  of  the  receipt  of  the  application  and  of  the 
day  and  time  of  day  when  the  same  was  received ;  one  of 
the  copies  of  the  trade  mark  deposited  shall  be  attached  to 
the  said  notice.  Art.  3.) 

If  the  registering  authority  find  that  anything  of  what  has 
here  been  prescribed  has  been  neglected  the  said  authority  shall 
refuse  the  renewal.  With  reference  to  the  communication  of  the 
decision  and  the  appeal  relating  to  the  same,  what  is  prescribed 
for  the  corresponding  case  in  Art.  5  shall  here  be  applicable. 

(If  the  registration  be  refused,  information  with  regard 
to  such  decision,  together  with  the  grounds  therefor,  shall 
be  communicated  to  the  applicant  in  writing  in  the  manner 
prescribed  in  Art.  3  for  the  cases  considered  therein.  In 
the  event  of  the  applicant  being  dissatisfied  with  the  deci- 
sion he  may  appeal  to  the  King  before  twelve  o'clock,  noon, 
on  the  sixtieth  day  after  the  day  of  the  decision,  otherwise 
he  forfeits  his  right  to  appeal.  Art.  5.) 


Assignment. 

The  right  to  a  registered  trade  mark  may  not  be  transferred 
otherwise  than  together  with  the  business  for  which  it  is  used. 

Should  a  business  be  transferred  to  another  owner,  the  right 
to  a  registered  trade  mark  used  for  the  business  passes  over 
from  the  transferrer  to  the  new  owner,  when  agreement  is  not 
made  that  the  right  to  the  mark  may  be  retained  by  the  former, 
or  that  both  may  use  the  mark  for  different  kinds  of  goods. 
(Article  8.) 

Fines. 

Whoever  on  goods  which  are  kept  for  sale  or  on  vessels  or 
wrappers  containing  the  same  places  without  authority  the  name 
or  firm  of  another  or  the  name  of  real  estate  of  another  or  a 
trade  mark  which  he  knows  to  be  registered  on  behalf  of  another, 
as  also  whoever  keeps  goods  for  sale,  which  to  his  kowledge  are, 
according  to  what  is  stated  above,  unlawfully  marked,  shall  be 
liable  to  a  fine  of  from  twenty  to  two  thousand  kroner  inclusively, 
or,  if  a  grave  detriment  has  resulted  from  the  act,  or  if  the  act 
be  made  under  specially  aggravating  circumstances,  to  imprison- 


SWEDEN 


495 


ment  from  one  month  to  two  years  inclusively,  as  well  as  to  uio 
payment  of  all  damages. 

,At  the  expense  of  the  one  condemned  the  marks  unlawfully 
placed  shall  be  expunged,  or,  if  the  expunction  cannot  otherwise 
be  effected,  the  goods  or  the  vessels  or  the  wrappers  containing 
the  same  shall  be  destroyed,  providing  .they  are  still  in  the  pos- 
session, or  in  any  other  way  at  the  disposal,  of  the  one  con- 
demned. 

Violation  of  this  article  may  not  be  prosecuted  by  the  public 
prosecutor  unless  the  offense  be  brought  before  the  Court  by 
the  injured  party. 

Law  in  Force  in  Sivedcn  to  Prevent  the  Sale  or  Importation 
of   Goods  Bearing   a   False   Indication  of  Origin. 

There  are  no  laws  or  regulations  in  force  prohibiting  the 
importation  of  goods  bearing  a  false  indication  of  foreign  origin ; 
but  the  customs  authorities  have  power  to  seize  and  confiscate 
imported  goods  bearing  a  false  indication  of  Swedish  origin. 
Foreigners  may  register  and  protect  their  trade  marks  in 
Sweden  if  their  State  has  entered  into  a  special  agreement  with 
Sweden  on  the  subject.  An  action  for  the  infringement  of  a 
trade  mark  can  only  be  taken  by  the  injured  party.  There  are 
no  requirements  as  to  the  marking  of  imported  goods  to  denote 
the  place  or  country  of  origin,  except  that  imported  goods 
bearing  indications  suggesting  Swedish  origin  must,  to  escape 
seizure  by  the  customs,  also  bear  a  clear  indication  that  they  are 
of  foreign  production. 

Marking  Goods :     " Varumiirke"  or  "Registreradt  Varumarke." 

Marks  of  Origin. 

A  commission  appointed  to  revise  the  Swedish  law  with 
respect  to  false  marks  of  origin  has  submitted  a  project  of  law 
for  that  purpose.  This  project  defines  a  false  mark  of  origin 
as  a  mark  which,  applied  to  an  article,  would  lead  to  the  belief 
that  it  was  manufactured  in  Sweden,  when  in  fact  it  was  im- 
ported from  abroad.  Mere  inscriptions  in  the  Swedish  language, 
or  designs  of  Swedish  origin,  shall  not  prevent  the  importation 
of  goods  so  marked,  provided  they  are  accompanied  with  proper 
explanatory  texts.  Goods  bearing  false  marks  of  origin  are  to 
be  seized  by  the  customs  agents  and  held  until  the  objectionable 
marks  have  been  taken  off,  or  their  effect  annulled  by  the  addi- 
tion of  an  easily  read  indication  of  foreign  origin.  The  importer 
may  be  subject  likewise  to  a  fine. 

When  treaties  of  reciprocity  have  been  made  with  any  other 
country,  imported  goods  so  marked  as  falsely  to  indicate  that 
country  as  the  source  of  the  goods,  unless  accompanied  with  an 
exact  statement  of  the  country  where  the  goods  are  made,  shall 
be  subject  to  the  provisions  heretofore  cited.  (La  Propriete  In- 
dustrielle,  1912,  p.  20.) 


496  SWITZERLAND 


SWITZERLAND 

Switzerland  is  a  Republic  and  entirely  an  inland  country. 
The  area  is  15,992  square  miles.  The  population  is  estimated 
at  3,742,000. 

Of  the  various  branches  of  agriculture  the  cheese  industry 
has  undoubtedly  the  greatest  importance  for  Switzerland,  as  on 
it  depends  the  prosperity  of  the  milk  industry,  the  rearing  of 
milk  cows  and  the  value  of  pasture  land. 

Foremost  among  the  industries  is  the  textile  industry, 
cotton,  embroidery,  silk,  watch  making,  machinery,  woolen,  etc. 
The  textile  industries  have  their  chief  centers  in  Zurich,  Basle, 
Glarus  and  St.  Gallen. 

Next  to  the  textile  industry,  that  of  watch  making  is  the  most 
important  in  Switzerland.  Among  the  metal  industries  the 
manufacture  of  machinery  ranks  next  in  importance  to  watch 
making,  having  its  chief  centers  in  Zurich  and  Winterthur. 

The  salt  mines  of  Switzerland  are  of  considerable  importance. 

MONEY — The  franc=100  centimes=9iX  d.— 19  cents  U.  S. 

WEIGHTS  AND  MEASURES — The  metric  system. 

Law. 
Law,  28th  of  September,  1890. 

Duration. 

The  duration  of  rights  established  by  registering  a  mark  is 
fixed  at  twenty  years ;  but  the  party  holding  the  right  can,  by 
renewing  the  deposit  in  the  course  of  the  last  year,  assure  him- 
self of  the  continuation  of  these  rights  for  a  new  period  of 
twenty  years,  and  so  on  indefinitely.  The  fee  for  registering 
each  mark,  as  well  as  each  renewal,  is  fixed  at  twenty  francs. 
(Art.  8.) 

Rights  shall  lapse  in  case  the  possessor  fails  to  make  use  of 
his  mark  within  three  consecutive  years.  (Art.  10.) 

Who  May  Register. 

The  following  are  authorized  to  register  marks : 

1.  Manufacturers  having  the  seat  of  their  manufacture  or 
production  in  Switzerland,  and  merchants  having  a  commercial 
house  regularly  established  within  the  same. 

2.  Manufacturers    or   merchants    established    in    States    that 
allow  citizens  of  Switzerland  reciprocity  of  treatment,  provided 
these  manufacturers  or  merchants  furnish  proof  that  their  marks 
or  firm-names  are  sufficiently  protected  in  their  home  country. 
(Art.  7.) 


SWITZERLAND 


W hat  May  Be  Registered. 


497 


The  following  are  considered  as  marks  of  manufacture  and 
trade : 

1.  Firm  names. 

2.  The  symbols  placed  upon  manufactured  products  of  mer- 
chandise, industrial  or  agricultural,  or  upon  their  coverings  in 
order  to  distinguish  them  or  to  establish  their  origin.     (Art.  1.) 

The  Swiss  firm  names,  used  as  marks,  are  protected  on  condi- 
tion that  the  formalities  prescribed  for  the  recognition  of  these 
names  are  fulfilled.  (Art.  2.) 

Requirements. 

Certified  copy  of  home  registration ;  power  of  attorney  (no 
legalization  required)  ;  five  copies  of  mark  and  one  wood-cut  or 
electrotype ;  declaration  or  the  like,  verifying  applicant's  business, 
must  be  produced. 

Mode  of  Application. 

Every  person  wishing  to  effect  or  renew  the  registration  of  a 
trade  mark  should  for  that  purpose  address  a  declaration  to 
the  Federal  Bureau  for  Trade  Marks  at  Berne.  The  declaration 
must  state  the  name,  address  and  profession  of  the  applicant, 
and  the  following  exhibits  should  also  be  appended  thereto : 

The  mark  or  the  exact  copy  of  the  same  in  duplicate,  with  a 
designation  of  the  articles  of  manufacture  or  merchandise  for 
which  the  mark  is  intended,  incidental  observations,  signature, 
address  and  name  of  profession  of  the  applicant,  an  electrotype 
and  a  fee  of  twenty  francs.  (Art.  11.) 

In  case  the  Federal  Bureau  decides  that  the  mark  is  not  new 
in  its  essential  characteristics  it  will  send  a  preliminary  notice  to 
the  applicant  for  him  to  maintain,  modify,  or  abandon  his  appli- 
cation. (Art.  12.) 

The  trade  mark  will  be  refused  if  it  comprises  as  essential 
parts  a  public  heraldic  device  or  any  other  figure  which  is  to  be 
considered  public  property,  or  when  the  mark  contains  indica- 
tions contrary  to  good  morals. 

Publication. 

The  mark  registered  is  published  within  the  fourteen  days 
following  the  registry  by  the  bureau  and  without  expense  to  the 
applicant  in  the  official  trade  bulletin  or  some  other  official 
Federal  bulletin  designated  for  that  purpose.  (Art.  15.) 

Assignments. 

The  mark  can  only  be  transferred  with  the  enterprise  whose 
products  or  merchandise  it  serves  to  distinguish.  The  transfer 

32 


498  SWITZERLAND 

is  of  no  effect  in  regard  to  third  parties  till  after  the  registration 
and  publication  of  the  act  confirming  the  same. 

Infringements  and  Penal  Provisions. 

The  following  will  be  prosecuted  in  civil  and  penal  suits  in 
conformity  with  provisions  hereinafter  set  forth : 

(a)  Those  who  counterfeit  another's  mark  or  imitate  marks 
of  others  so  as  to  deceive  the  public. 

(b)  Those  who  usurp  the  marks  of  others,  for  their  own 
articles  of  manufacture  or  merchandise. 

(c)  Those  who  sell,  place  on  sale  or  in  circulation  articles 
of  manufacture  or  merchandise  accompanied  by  a  mark  which 
they  know  to  be  counterfeited,  or  imitated,  or  unduly  applied. 

(d)  Those  who  knowingly  co-operated  in  infringing  or  who 
have  been  knowingly  accessory  to  infringements. 

(e)  Those  who  refuse  to  declare  the  origin  of  articles  of 
manufacture  or  merchandise  in  their  possession  bearing  marks 
counterfeited,  imitated,  or  unduly  applied.     (Art.  24.) 

The  infractions  mentioned  above  are  punished  by  a  fine  of  30 
to  200  francs,  or  imprisonment  of  from  three  days  to  one  year, 
or  both. 

The  punishment  may  be  doubled  in  case  of  repetition  of  the 
offense. 

These  penalties  are  not  applicable  when  there  has  been  simply 
a  mistake,  imprudence,  or  negligence ;  still  the  civil  damage  suits 
can  be  instituted.  (Art.  25.) 

Those  who  shall  have  unduly  inscribed,  upon  their  marks  or 
commercial  papers,  any  mention  tending  to  make  -believe  that 
their  mark  has  been  registered. 

Those  who  unduly  make  use  of  indications  of  origin  or  men- 
tion of  industrial  rewards  upon  sign  boards,  advertisements, 
circulars,  bills,  letters  or  commercial  papers,  or  who  omit  the 
indications  prescribed  under  Art.  22,  will  be  punished,  officially 
or  on  complaint  of  the  party  injured,  by  a  fine  of  30  to  500 
francs  or  imprisonment  of  from  three  days  to  one  year. 

The  punishment  may  be  doubled  in  case  of  repetition  of  the 
offense.  (Art.  2G.) 

The  civil  or  penal  action  can  be  instituted : 

1.  Concerning  marks:  by  the  deceived  buyer  or  the  owner 
of  the  mark. 

2.  Concerning  the  origin  of  marks: 

(a)  By  every  manufacturer,  producer  or  merchant  injured 
in  his  interests  and  established  in  the  city,  locality,  region  or 
country  falsely  indicating  his  mark. 

(b)  By  every  buyer  deceived  by  means  of  a  false  indication  of 
origin. 

3.  Concerning   industrial   rewards:    by   every   manufacturer, 


SWITZERLAND  499 

producer  or  merchant  engaged  in  the  industry  or  trade  of  similar 
articles. 

Penal  procedure  can  take  place  either  at  the  domicile  of  the 
delinquent  or  at  the  place  where  the  offense  has  been  committed. 
In  any  case  there  can  be  no  accumulation  of  prosecutions  for  the 
same  offense. 

No  acts  prior  to  the  registry  of  a  mark  can  be  prosecuted 
civilly  or  penally. 

Action  is  debarred  by  limitation  when  more  than  two  years 
have  elapsed  since  the  last  act  of  counterfeiting.  (Art.  28.) 

The  action  instituted  against  the  applicant  of  a  mark  not 
having  his  domicile  in  Switzerland,  may  be  brought  before  the 
tribunal,  in  which  the  seat  of  the  Federal  office  is  located,  if 
the  applicant  has  chosen  his  domicile  in  Switzerland  and  notified 
the  office  thereof.  (Art.  30.) 

The  tribunal  shall  ordain  the  necessary  protective  measures, 
especially  the  seizure  of  the  instruments  and  tools  serving  to 
counterfeit;  also  of  the  articles  of  product  and  merchandise  on 
which  the  mark  at  issue  is  found.  (Art.  31.) 

The  fines  are  deposited  in  the  cantonal  treasury. 

Fines  not  paid  are  converted  into  imprisonment  at  the  rate  of 
one  day  for  5  francs.  (Art.  33.) 

The  following  will  be  prosecuted  in  civil  or  penal  suits  in  con- 
formity with  provisions  hereinafter  set  forth: 

(a)     Those  who  counterfeit  another's  mark. 

(&)  Those  who  imitate  marks  of  others  so  as  to  deceive  the 
public. 

(c)  Those  who  usurp  the  marks  of  others,  or  the  wrappings 
or  envelopes  bearing  the  marks  of  others,  for  their  own  articles 
of  manufacture  or  merchandise  in  a  manner  to  make  the  public 
believe  that  they  proceed  from  the  house  whose  mark  they  unduly 
bear.  ^ 

(d}  Those  who  sell,  place  on  sale  or  in  circulation  articles 
of  manufacture  or  merchandise  accompanied  by  a  mark  which 
they  know  to  be  counterfeited,  or  imitated,  or  unduly  applied. 

(e)  Those  who  have  knowingly  co-operated  in  infringing,  or 
who  have  been  knowingly  accessory  to  infringement.  (Art.  24.) 

Red  Cross  Law  of  April  14,  1910. 

Outside  of  the  sanitary  service  of  the  army,  the  following  only 
are  authorized  to  use  the  emblem  of  the  Red  Cross  on  a  white 
ground,  and  the  words  "Red  Cross"  or  "Geneva  Cross,"  as  the 
name  or  for  the  designation  of  their  service: 

1.  The  International  Committee  of  the  Red  Cross  at  Geneva. 

2.  The   Swiss   Central   Society  of  the   Red   Cross,   and   the 
societies  and  establishments  recognized  by  the  Federal  Council 
as  auxiliary  members  of  the  Central  Society  of  the  Red  Cross. 


500  SWITZERLAND 

The  societies  and  establishments  subsidized  by  the  Confedera- 
tion as  members  of  the  auxiliary  sanitary  service  in  the  army, 
or  of  the  service  of  instruction  of  nurses,  but  which  are  not 
recognized  as  being  auxiliary  members  of  the  Swiss-  Central 
Society  of  the  Red  Cross,  have  the  right  to  use  the  emblem  and 
the  name  of  the  Red  Cross  only  if  they  have  been  in  possession 
of  it  and  have  made  use  of  it  before  the  entry  of  the  present 
law  into  force.  (Art.  1.) 

Whoever,  without  having  the  right  to  the  use  of  the  emblem 
of  the  Red  Cross  on  a  white  ground  or  the  words  "Red  Cross" 
or  "Geneva  Cross,"  applies  this  emblem  or  these  words,  or 
analogous  emblems  or  words  capable  of  giving  rise  to  confu- 
sion, on  articles  of  merchandise  or  the  packing  thereof,  or  sells, 
places  on  sale  or  in  circulation  articles  of  merchandise  thus 
marked,  or  unduly  employs  this  emblem  or  these  words  in  any 
other  manner,  shall  be  punished  by  a  fine  not  to  exceed  500  francs 
or  by  imprisonment  not  to  exceed  one  month,  or  by  a  fine  and 
imprisonment  within  these  limits. 

These  penalties  may  be  increased  not  to  exceed  double  in  case 
of  a  second  offense,  if  three  years  have  not  elapsed  since  the 
last  sentence  given  with  the  force  of  chose  jugee,  for  infraction 
of  this  law.  (Art.  2.) 

The  general  provisions  of  the  first  part  of  the  Federal  Penal 
Code  of  Feb.  4,  1853,  applies  by  analogy  to  infractions  provided 
for  by  the  present  law. 

The  criminal  prosecution  and  the  sentence  for  infractions  of 
this  law  are  under  the  jurisdictions  of  the  cantons.  (Art.  3.) 

The  competent  authority  shall  order  the  seizure  of  the  products 
and  packages  marked  contrary  to  the  provisions  of  this  law. 

Even  in  the  case  of  acquittal,  the  court  shall  order  the  destruc- 
tion of  the  illegal  marks. 

When  the  marks  have  been  destroyed,  the  products  seized  shall 
be  restored  to  their  owner  upon  payment  of  the  expense  of  de- 
struction and  the  costs  charged  against  him  and  the  fine.  (Art. 
4.) 

Commercial  names  and  names  of  associations  the  use  of  which 
is  forbidden  in  the  sense  of  Articles  1  and  2,  are  not  inscribed 
on  the  commercial  register. 

Likewise  the  registration  and  the  deposit  of  trade  marks  con- 
trary to  the  present  law,  shall  be  refused.  When  the  registration 
of  such  mark  is  permitted  through  error,  the  Federal  Depart- 
ment charged  with  the  supervision  of  the  registration  may  order 
the  cancellation  of  the  mark.  (Art.  5.) 

Members  of  the  military  force  who  in  time  of  war  unduly 
employ  the  emblem  of  the  Red  Cross  on  a  white  ground  and  the 
words  "Red  Cross  or  "Geneva  Cross,"  shall  be  punished  by  im- 
prisonment not  to  exceed  six  months.  In  cases  of  little  gravity 


SWITZERLAND 


SOT 


the  guilty  party  shall  only  be  punished  in  a  disciplinary  manner. 
The  same  shall  also  hold  good  for  infractions  committed  by  the 
military  in  times  of  peace.  (Art.  6.) 

Civilians  who  in  time  of  war  unduly  employ  the  flag  or  armlet 
of  the  Red  Cross  shall  be  punished  by  imprisonment  not  to  exceed 
six  months.  (Art.  7.) 

Infractions  of  Art.  6  which  are  not  punished  in  a  disciplinary 
manner,  and  infractions  of  Art.  7,  shall  be  tried  by  the  military 
tribunals.  In  this  case  the  provisions  of  the  first  part  of  the 
Federal  Penal  Code  for  the  troops  of  Aug.  27,  1851,  shall  be 
applicable  by  analogy.  (Art.  8.) 

The  present  law  went  into  force  January  1,  1911. 

Names  of  associations  or  establishments  and  commercial  names 
acquired  before  January  1,  1911,  and  contrary  to  the  present  law, 
shall  be  changed  before  October  1,  1912. 

From  this  time  on  the  authorities  in  charge  of  the  commercial 
register  shall  cause  the  modification,  or  the  cancellation'  of  com- 
mercial names  contrary  to  the  provisions  of  this  law. 

The  registration  of  a  trade  mark  contrary  to  the  present  law 
shall  be  considered  lapsed  from  October  1,  1912.  (Art.  9.) 

In  accordance  with  the  provisions  of  the  law  of  June  17,  1874, 
relative  to  the  popular  vote  on  Federal  laws  and  decrees  the 
Federal  Council  is  instructed  to  publish  the  present  law  and  to 
set  a  date  upon  which  it  shall  enter  into  force.  (Art.  10.)  (La 
Propriete  Indnstrielle,  Oct.  31,  1910.) 

Unfair  Competition. 

The  Federal  Court  of  Switzerland,  under  date  of  October, 
1904,  Tendered  a  decision  which  involved  two  interesting  and 
somewhat  unusual  questions  of  trade  mark  law.  Messrs.  Perrin 
Bros.  &  Co.,  glove  makers,  sought  to  restrain  the  use  by  one 
Vaurillon,  a  glove  merchant  of  Geneva,  of  the  phrase  "A  la 
Chevrette,"  that  is  to  say  "At  the  Sign  of  the  Stag"  upon  his 
signs  and  stationery.  This  phrase  the  complainant  used  as  its 
trade  mark  and  the  question  raised  was  whether  its  use  by  the 
defendant  upon  signs  and  stationery  alone,  and  not  upon  the 
goods,  constituted  infringement  of  the  trade  mark.  The  court 
said  that  this  was  not  infringement,  which  could  be  predicated 
only  upon  the  wrongful  use  of  another's  mark  or  the  imitation 
thereof  upon  merchandise  or  upon  the  labels  or  packages  con- 
taining the  same,  but  that  such  use  of  the  mark  upon  signs, 
stationery  ^nd  in  advertising  did,  nevertheless,  constitute  unfair 
competition. 

Secondly,  it  was  argued  that  inasmuch  as  Perrin  Bros.  &  Co. 
had  no  branch  establishment  in  Geneva,  the  use  of  the  phrase  by 
the  defendant  in  that  city  could  not  interfere  with  their  trade 
and  could  not,  therefore,  afford  them  the  right  to  any  relief. 


502  SWITZERLAND 

Upon  this  point,  however,  the  court  said  that  the  plaintiff,  if 
entitled  to  relief,  was  entitled  to  relief  everywhere  in  Switzerland. 
Moreover,  it  did  not  appear  that  the  use  by  the  defendant  was 
confined  to  Geneva,  since  they  sent  their  advertising  matter  out 
to  their  foreign  clientele,  and  took  orders  in  cities  where  the 
plaintiff,  in  fact,  had  branch  stores,  orders  being  often  transmitted 
to  the  defendant  by  mail,  bearing  as  an  address  the  words  ''A 
la  Chevrette,"  sometimes  even  entirely  without  the  defendant's 
name.  (Perrin  Freres  vs.  Vaurillon,  La  Propriete  Ind.,  1905, 
p.  186.) 

The  question  of  how  far  the  restrictions  of  territory  within 
which  a  business  is  conducted  limit  its  right  to  protection,  is 
therefore  rather  suggested  than  decided  by  the  court.  The  ques- 
tion is  novel  and  as  yet  undecided  in  this  country.  There  is  no 
doubt,  however,  that  in  a  proper  case,  the  fact  being  shown  that 
the  patronage  of  a  business  is  necessarily  local,  as  for  example, 
that  of  a  restaurant  or  hotel,  the  right  to  restrain  imitation,  how- 
ever palpable,  in  a  distant  locality  would  be  denied. 

Law  in  Force  in  Sivitzerland  to  Prevent  the  Sale  or  Importation 
of  Goods  Bearing  a  False  Indication  of  Origin. 

The  Swiss  government  have  made  no  special  provisions  for 
carrying  out  the  Convention  of  Paris  for  the  protection  of 
industrial  property  (1883),  as  modified  by  the  Additional  Act 
of  Brussels  of  1900,  or  for  the  execution  of  the  Agreement  of 
Madrid  of  April  14,  1891,  with  regard  to  the  prevention  of  false 
indications  of  origin.  The  Federal  Law  of  Sept.  26,  1890, 
relating  to  the  protection  of  trade  marks  and  marks  showing  the 
origin  of  goods,  forbids  the  assignment  to  a  product  of  a  false 
indication  of  origin ;  but  the  courts  have  never  decided  whether 
this  law  applies  to  false  indications  of  origin  generally  and,  in 
particular,  to  cases  provided  for  in  Art.  10  of  the  Paris  Con- 
vention and  in  Art.  1  of  the  Arrangement  of  Madrid  of  1891  for 
the  prevention  of  false  'indications  of  origin,  or  merely  to  such 
as  involve  infringement  of  registered  trade  marks.  The  sale, 
offering  for  sale,  or  putting  into  circulation  of  goods  bearing 
falsified  or  imitated  registered  trade  marks  is  prohibited  by  the 
law.  Civil  or  criminal  action  may  be  brought  for  offenses 
against  the  Trade  Marks  Law  by  the  owner  of  the  trade  mark 
infringed  or  by  the  defrauded  purchaser  of  falsely  marked  goods. 
No  special  steps  are  taken  to  prevent  the  importation  of  goods 
bearing  a  false  indication  of  origin.  Imported  matches  must  be 
marked  with  the  name  of  the  manufacturer's  firm  or  his  regis- 
tered trade  mark.  Ordinance  dated  January  29,  1909,  enact 
that— 

1.  Certain  foreign  food  products  can  only  be  imported  into 
or  sold  or  offered  for  sale  in  Switzerland  if  they  bear  an  indica- 
tion of  the  country  of  origin ; 


SWITZERLAND  503 

.2.  Certain  other  foreign  food  products  can  only  be  imported 
if  accompanied  by  certificates  of  origin. 

Otherwise,  there  are  no  requirements  as  to  the  marking  of 
imported  goods  to  show  the  country  or  place  of  origin,  or  to 
denote  that  they  are  foreign. 

Marking  Goods:  "Schutzmarke"  or  "Marque  deposee." 

Rights  of  Priority. 

Of  the  few  countries  where  the  rights  of  the  first  user  of  a 
mark  are  recognized,  whether  such  first  use  shall  have  been  made 
in  that  or  in  a  foreign  country,  the  Republic  of  Switzerland 
appears  to  be  one.  According  to  the  Swiss  laws  the  right  to  the 
use  of  a  trade  mark  is  vested  in  the  party  first  employing  it. 
The  question  of  whether  this  meant  the  first  to  employ  it  in 
Switzerland,  or  the  first  to  employ  it  anywhere,  whether  in 
Switzerland  or  outside,  was  decided  by  the  Swiss  Federal  Trib- 
unal under  date  of  December  8,  1900.  The  suit  was  one  brought 
by  an  Austrian  house  against  a  Swiss  house,  for  infringement 
of  the  former's  trade  mark  in  Switzerland.  It  appeared  that 
the  mark  had  been  originally  used  by  the  Austrian  house  at  home, 
before  it  had  been  used  by  the  Swiss  house,  but  had  been  used 
by  the  Swiss  house  in  Switzerland  before  it  had  been  there  used 
by  the  Austrian  house.  The  court  held  that  priority  of  use  suf- 
ficient to  sustain  the  action  was  established  upon  this  state  of 
facts  in  behalf  of  the  complainant.  That  priority  of  use  in  any 
country  with  which  Switzerland  had  concluded  a  treaty  for  the 
reciprocal  protection  of  trade  marks  accorded  the  same  rights 
to  the  first  user  in  that  country  as  would  arise  from  priority  of 
use  in  Switzerland,  and  that,  in  the  case  before  it,  the  rights 
of  the  Austrian  house  were  superior,  even  though  it  had  not, 
as  a  matter  of  fact,  made  any  use  whatever  of  the  trade  mark  in 
Switzerland. 

Trade  Marks  and  Trade  Names. 

The  report  of  a  case  of  infringement  of  a  trade  mark  in  a 
Swiss  court  shows  that  the  doctrine  applied  there  does  not  differ 
greatly  from  that  in  force  in  the  United  States.  The  plaintiffs, 
makers  of  champagne,  used  two  marks  upon  wines  of  their  pro- 
duction, the  one  upon  the  corks,  consisting  essentially  of  the  firm 
name  Moet  &  Chandon,  the  other  a  label  consisting  of  a  figurative 
design,  and  including  the  name  of  the  same  firm,  the  predeces- 
sors in  business  of  the  plaintiff's.  Each  of  these  marks  was 
registered  in  Switzerland  in  1897.  The  defendant  was  making 
use  upon  his  bottles  and  corks  of  labels  like  in  color,  in  many 
details,  and  in  general  appearance  to  those  of  the  plaintiffs,  and 
evidently  copied  from  them,  with  the  intent  to  deceive  the  pur- 
chasing public.  The  word  "Monette"  was  used  upon  the  de- 


504  SWITZERLAND 

fendant's  label  and  corks,  and  the  arrangement  of  the  words  on 
the  latter's  labels  was  very  similar  to  that  shown  on  the  plain- 
tiff's. The  court  said  that  deception  was  more  likely,  because 
the  plaintiff's  champagne  was  usually  called  for  short  "Moet." 
In  the  application  of  that  section  of  the  trade  mark  law  which 
provided  that  he  should  be  liable  who  usurped  the  mark  of 
another  for  his  own  goods,  an  injunction  was  granted  against 
the  use  by  defendant  of  the  word  "Monette"  upon  labels  or  corks, 
damages  were  awarded  and  it  was  ordered  that  the  infringing 
labels  be  confiscated  and  the  offending  marks  removed  from  the 
defendant's  corks  in  stock.  (Chandon  &  Co.  v.  Champagner- 
kellerei,  A.  G.  in  Biel,  Zeitschrift  fiir  Schweizerisches  Recht, 
1909,  p.  100.) 

Another  suit  decided  by  the  Court  of  Civil  Justice  of  Geneva 
concerned  the  right  of  a  successor  in  business  to  make  use  of  the 
family  name  of  his  predecessor.  One  Gay  conducted  a  brewery 
at  Geneva  under  the  name  B.  Ackermann,  having  purchased  the 
business  from  a  previous  owner  of  that  name  and  .having  acquired 
from  him  the  right  to  use  the  name.  After  he  had  continued  the 
use  of  this  name  for  several  years,  certain  members  of  the  Acker- 
mann's  family  undertook  to  enjoin  the  use  of  the  name,  not  upon 
the  ground  of  unfair  competition,  since  they  were  not  engaged  in 
any  similar  business,  but  on  the  general  ground  that  the  right  to  the 
use  of  the  family  name  by  another  under  such  circumstances,  was 
unauthorized.  The  court,  however,  said  that  it  was  not  in  keeping 
with  the  customs  of  business  to  allow  a  house  to  get  a  reputation 
under  a  certain  name  and  with  the  consent  of  the  first  proprietor, 
and  then,  after  many  years,  to  take  the  name  away  without  due 
cause  and  deprive  the  house  of  the  good  will  that  attached  there- 
to. It  was  held  that  there  was  no  wrong  done  by  Gay,  and  no 
damage,  material  or  moral,  suffered  by  the  plaintiffs.  (Acker- 
mann vs.  Gay,  Zeitschrift  fiir  Schweizerisches  Recht,  1909,  p. 
116.) 

Trade  Names  in  Switzerland. 

The  Civil  Court  of  Geneva  has  held  that  the  owner  of  a  hotel 
has  a  proprietary  right  in  its  name,  and  may  prosecute  for  the 
use  of  a  similar  name  upon  a  rival  establishment.  The  first 
user  of  a  sign  or  trade  name  acquires  the  right  under  the  Swiss 
Code  to  prevent  the  use  of  the  same  or  a  similar  name  by  an- 
other. Moreover,  this  right  of  action  arises  from  the  fact  of 
the  use  by  another  of  a  name  or  sign  calculated  to  cause  con- 
fusion, irrespective  of  any  proof  of  such  confusion,  or  of  fraud- 
ulent intent  on  the  part  of  the  defendant.  The  name,  "Pension 
des  Bergues"  is  likely  to  be  confused  with  the  name  "Hotel  des 
Bergues"  and  the  relatively  small  importance  of  the  former  es- 
tablishment is  no  defense  to  its  proprietor. 


SWITZERLAND  505 

(Societe  des  Bergues  vs.  Kammer,  Annales  de  la  Prop.  Ind., 
1908,  p.  99.) 

Trade  Mark  Infringement. 

The  manufacturer  of  certain  chemical  products  known  as 
"Pastilles  Valda"  and  the  name  of  which  was  registered  as  a 
trade  mark,  brought  suit  to  restrain  another  manufacturer  of 
similar  pastilles  of  the  same  color  and  size,  which  he  advertised 
as  "Pastilles  Alpha,  Valda  Style."  It  was  shown  that  the  de- 
fendant filled  orders  for  "Pastilles  Valda"  with  his  own  product, 
although  he  billed  them  as  "Pastilles  Alpha"  and  it  was  further 
shown  that  retail  druggists  had  sold  the  defendant's  product  as 
and  for  the  plaintiff's.  The  court  of  first  instance  held  that  the 
use  of  the  term  "Valda  Style"  was  not  calculated  to  confuse 
any  purchaser,  and  for  the  acts  of  retailers  who  substituted  the 
one  article  for  the  other,  the  defendant  could  not  be  held  re- 
sponsible. 

An  appeal  was  taken  to  the  Federal  Court,  which  dismissed 
the  appeal.  The  higher  court  said  that  the  right  could  not  be 
denied  to  a  merchant  to  make  use  of  a  word  employed  as  a 
mark  by  a  rival,  if  he  preceded  it  in  use  with  the  word  "style," 
"imitation"  or  "kind."  While  this  right  is  not  recognized  in 
France,  it  is  recognized  both  in  the  Swiss  and  in  the  German 
law.  If  these  words  are  conspicuously  shown,  so  that  the  reader 
immediately  sees  that  the  product  offered  is  not  that  for  which 
the  mark  is  registered,  but  is  one  in  imitation  thereof,  such  a 
course  of  competition  cannof  be  considered  improper.  As  for 
the  acts  of  the  retailers  in  passing  off  the  defendant's  goods  in 
place  of  the  plaintiff's,  the  court  said  that  whatever  confusion 
might  have  been  occasioned  in  this  way,  the  defendant  was  not 
responsible  therefor,  inasmuch  as  he  had  done  what  the  law  re- 
quired to  distinguish  his  goods  from  those  of  the  plaintiff: 

(Canonne  vs.  Rossier,  La  Propriete  Industrielle,  1912,  p.  39.) 

Liability  for  Infringement. 

The  Swiss  Federal  Supreme  Court  in  September,  1909,  gave 
a  decision  in  the  case  of  the  Havana  Commercial  Company  of 
New  York,  against  a  number  of  retailers  in  the  City  of  Geneva. 
The  subject  of  litigation  was  the  wrongful  use  of  the  company's 
mark  "Villar  y  Villar,"  for  cigars.  Action  having  been  insti- 
tuted against  a  number  of  retailers  the  manufacturers  of  the 
goods  alleged  to  infringe  intervened  in  the  suit,  for  the  defense 
of  their  rights,  and  claimed  that  the  mark  had  fallen  into  the 
public  domain.  The  Federal  Court  held  that  the  force  of  Article 
6  of  the  International  Convention,  imposing  upon  any  State 
adhering  thereto  the  duty  to  register  and  protect  a  mark  regis- 
tered in  the  country  of  origin,  was  limited  in  its  effect  to  the 
form  of  the  mark,  and  the  characters  which  constitute  it.  That, 


506  TRANSVAAL 

on  the  other  hand,  the  national  law  still  regulated  all  questions 
of  substance.  The  Federal  Court  held  that  the  mark  had  not 
fallen  into  the  public  domain.  In  order  to  obtain  such  a  result, 
it  would  be  necessary  that  it  become  a  generic  designation  of 
the  product  upon  which  it  is  used,  or  that  the  infringement  be 
expressly  or  tacitly  authorized  by  the  legitimate  owner  of  the 
mark. 

As  to  the  retailers,  the  Court  said  that  they  could  not  avail 
themselves  of  the  claim  that  they  had  acted  in  good  faith,  for 
the  absence  of  fraudulent  intent  did  not,  under  the  Swiss  law, 
relieve  of  the  civil  responsibility  for  wrongs.  The  retailers 
should  examine  into  the  source  of  the  merchandise  which  they 
purchase  and  the  propriety  of  the  marks,  and  if  they  do  not, 
they  became  responsible  for  any  injury  resulting  from  the  use. 
The  Federal  Court  consequently  affirmed  the  decree  of  that  at 
Geneva,  which  had  condemned  each  retailer  to  a  fine  of  one 
hundred  francs  and  expenses,  and  forbidden  them  to  make  any 
further  sales  of  the  counterfeit  products. 


TRANSVAAL 

Transvaal  is  situated  in  South  Africa,  lying  north  and  east  of 
the  Cape  Colony  and  between  the  Orange  River  Colony  and  the 
Limpope  or  Crocodile  River.  The  area  is  about  112,000  English 
square  miles.  The  population  is  estimated  at  about  1,272,000. 
No  part  of  the  territory  touches  the  sea.  The  nearest  ports  are 
Delagoa  Bay  and  Durban,  Natal.  Gold  mining  is  the  chief  in- 
dustry of  the  country.  The  climate  is  also  favorable  for  the 
breeding  of  cattle  and  sheep. 

In  addition  to  gold,  the  country  is  rich  in  minerals,  coal  exist- 
ing in  large  quantities,  also  silver,  copper,  iron,  lead,  tin,  galena, 
cobalt,  diamonds,  etc. 

MONEY,  WEIGHTS  AND  MEASURES — Same  as  Great  Britain. 

Law. 

Provision  is  made  for  the  registration  of  Trade  Marks  in  the 
Transvaal  Colony  by  Proclamation  No.  23  of  1902. 

Duration. 

The  effect  of  registration  is  to  secure  protection  in  perpet- 
uity, as  no  provision  is  made  for  the  payment  of  renewal  fees. 

What  May  be  Registered. 

The  definition  of  a  Trade  Mark  or  the  essential  particulars 
which  a  Trade  Mark  must  contain  in  order  to  secure  registra- 


TRANSVAAL  507 

tion  is  similar  to  the  requirements  of  the  English  Trade  Mark 
Law  and  English  decisions  and  practice  are  generally  followed. 

Mode  of  Application  and  Documents  Required. 

In  order  to  obtain  registration  of  a  trade  mark  an  application 
must  be  filed  with  the  Registrar  of  Trade  Marks  at  Pretoria, 
and  must  be  written  on  foolscap  paper  and  shall  have  on  the 
left  hand  side  a  margin  of  not  less  than  one  and  a  half  inches. 

An  application  for  registration  of  a  trade  mark,  if  made  by 
any  firm  or  partnership,  may  be  signed  by  some  one  or  more 
members  of  such  firm  or  partnership,  as  the  case  may  be. 

If  the  application  be  made  by  a  body  corporate  it  may  be 
signed  by  the  Secretary  or  other  principal  officer  of  such  body 
corporate. 

The  documents  required  are:  Form  of  application,  power  of 
attorney,  six  representations  of  the  Mark  and  one  block  or  elec- 
trotype of  the  Mark. 

Power  of  attorney  must  be  executed  by  the  applicant  in  the 
presence  of  and  be  attested  by  two  witnesses. 

Every  application  for  registration  of  a  trade  mark  shall  con- 
tain a  representation  of  the  Mark  affixed  to  the  back  of  the  Ap- 
plication Form. 

Where  the  representatidn  is  larger  than  the  back  of  the  ap- 
plication, the  representation  shall  be  mounted  on  linen,  tracing 
cloth,  or  other  material  that  the  Registrar  may  consider  suit- 
able. Part  of  the  mounting  shall  be  affixed  to  the  back  and  the 
rest  may  be  folded  over. 

The  six  additional  representations  of  each  Mark  accompany- 
ing the  application  must  correspond  exactly  with  that  affixed  to 
the  back  of  the  application  in  Form  and  noted  with  all  such 
particulars  as  may  from  time  to  time  be  required  by  the  Regis- 
trar. Such  particulars  shall,  if  required,  be  signed  by  the  Ap- 
plicant or  his  Attorney  or  Patent  Agent. 

All  representations  of  Marks  must  be  of  a  durable  nature; 
the  additional  representations  shall  be  affixed  to  half  sheets  of 
strong  foolscap  and  noted  as  aforesaid. 

When  an  applicant  for  the  registration  of  a  trade  mark  is 
out  of  the  Colony  at  the  time  of  making  the  application  he  shall 
give  the  Registrar  an  address  for  service  in  this  Colony,  and 
if  he  fails  to  do  so  the  application  shall  not  be  proceeded  with 
until  the  address  has  been  given. 

Assignments. 

The  right  to  the  use  of  a  trade  mark  is  assignable  in  writing, 
and  the  following  provisions  are  made  in  the  rules  in  respect 
of  assignments. 


508  TRANSVAAL 

Where  a  person  becomes  entitled  to  a  registered  trade  mark 
by  assignment,  or  otherwise,  a  request  for  the  entry  of  his  name 
in  the  register  as  proprietor  of  the  trade  mark  shall  be  addressed 
to  the  Registrar  and  left  at  the  Patent  Office,  Trade  Marks 
Branch. 

Such  request  shall,  in  the  case  of  an  individual,  be  made  and 
signed  by  the  person  requiring  to  be  registered  as  proprietor, 
and  in  the  case  of  a  firm  or  partnership  by  some  one  or  more 
members  of  such  firm  or  partnership,  or  in  either  case  by  his 
or  their  a^ent  respectively  duly  authorized  to  the  satisfaction  of 
the  Registrar,  and  in  the  case  of  a  body  corporate  by  their 
agent,  authorized  in  like  manner. 

Every  such  request  shall  state  the  name,  address  and  descrip- 
tion of  the  person  claiming  to  be  entitled  to  the  trade  mark 
(hereinafter  called  the  claimant)  and  the  particulars  of  assign- 
ment, transmission  or  other  operation  of  law,  by  virtue  of  which 
he  requires  to  be  entered  in  the  register  as  proprietor  so  as  to 
show  the  manner  in  which,  and  the  person  or  persons  to  whom 
the  trade  mark  has  been  assigned  or  transmitted,  and  so  as  to 
show  further  that  it  has  been  so  assigned  or  transmitted  in  con- 
nection with  the  good  will  of  the  business  concerned  in  the  par- 
ticular goods  or  classes  of  goods  for  which  the  trade  mark  has 
been  registered. 

Every  such  request  shall  be  accompanied  by  an  affidavit  to  be 
thereunder  written,  verifying  the  several  statements  therein,  and 
declaring  that  the  particulars  above  described  comprise  every  ma- 
terial fact  and  document  affecting  the  proprietorship  of  the 
trade  mark  as  claimed  by  such  request. 

Classification. 

The  classification  of  goods  is  similar  to  that  in  the  English 
trade  mark  law. 

Practice. 

A  trade  mark  must  be  registered  as  belonging  to  particular 
goods  or  description  of  goods,  and  when  registered  shall  be 
transferred  and  transmitted  only  in  connection  with  the  good  will 
of  the  business  concerned  in  such  particular  goods  or  description 
of  goods,  and  shall  be  determinable  with  such  good  will,  but 
subject  as  aforesaid  application  for  registration  of  a  trade  mark 
shall  be  deemed  to  be  equivalent  to  public  use  of  such  Mark. 

A  trade  mark  may  be  registered  in  any  color  or  colors  and 
such  registration  shall,  subject  to  the  provisions  of  this  Procla- 
mation, confer  on  the  registered  owner  the  exclusive  right  to 
use  the  same  in  that  or  any  other  color  or  colors. 

The  period  required  to  effect  registration  of  a  trade  mark  and 
obtain  a  certificate  is  about  two  months  from  the  date  of  the 
filing  of  the  papers. 


TRANSVAAL  509 

Where  registration  of  a  trade  mark  has  not  been  issued  or  not 
been  completed  within  twelve  months  from  the  date  of  the  appli- 
cation by  reason  of  default  on  the  part  of  the  applicant,  the  ao- 
plication  shall  be  deemed  to  be  abandoned. 

The  Registrar  of  Deeds  has  power  to  grant  an  enlargement 
of  time. 

An  appeal  against  the  Registrar's  decision  may  be  made  to  the 
Supreme  Court. 

Trade  Marks  in  the  Transvaal. 

Two  decisions  of  the  Registrar  of  trade  marks  of  the  Trans- 
vaal, upon  oppositions  filed  to  applications  for  registrations,  are 
of  interest.  The  first  of  these  decisions  had  to  do  with  an 
application  for  the  registration  of  a  trade  mark  for  cigars,  con- 
sisting of  a  label,  the  important  feature  of  which  was  the  words 
"El  Troco."  Cigars  under  this  mark  had  been  imported  by  the 
applicant  from  Germany  for  fifteen  years  and  until  lately  had 
been  sold  by  the  applicant  under  the  manufacturer's  original 
label,  without  any  additional  mark  of  his  own.  Afterwards, 
having  altered  the  label  by  substituting  his  own  portrait  for  the 
portrait  that  appeared  thereon,  he  applied  for  registration  of 
the  label  as  altered.  The  Registrar  said  that  the  variation  was 
not  material.  For  purposes  of  registration  the  two  labels  were 
practically  the  same.  The  question,  therefore,  was  as  to  the 
right  of  the  applicant  to  register  the  label  of  the  manufacturer, 
under  which  he  had  been  importing  cigars  for  fifteen  years  past. 

The  opponents  had  been  for  a  lesser  period  importing  other 
"El  Troco"  cigars  from  Germany,  purchasing  them  from  a  man- 
ufacturer other  than  the  one  from  whom  the  applicant  pur- 
chased, but  under  the  same  label.  It  appeared  that  the  second 
manufacturer  required  the  right  to  use  the  label  from  the  orig- 
inal designer  thereof,  and  the  opponents  contended  that  the  words 
"El  Troco"  were  common  to  the  trade  and  the  applicant  could 
not  claim  an  exclusive  right,  in  respect  to  these  words.  Conse- 
quently, the  words  were  not  registrable  as  his  trade  mark.  The 
applicant,  on  the  other  hand,  contended  that  he  was  the  first  to 
introduce  the  "El  Troco"  cigars  in  the  colony,  that  he  created 
a  market  for  them  and  was  entitled  to  the  registration  of  the 
words. 

The  Registrar  said  that  the  opponent  had  not,  in  his  opinion, 
discharged  the  burden  of  proof  upon  them,  in  their  efforts  to 
show  that  the  mark  is  common  to  the  trade.  As  to  Germany, 
there  was  no  evidence  that  the  cigars  were  sold  under  this  mark, 
by  any  except  the  two  firms  from  whom  the  respective  parties 
obtained  their  goods ;  and,  therefore,  it  could  hardly  be  said  that 
the  words  were  common  to  the  trade  in  that  country.  No  evi- 
dence was  produced  to  show  that  the  mark  was  common  to  the 
trade  in  any  other  part  of  Europe  and  no  evidence  to  indicate 
that  the  mark  is  common  to  the  trade  in  the  Transvaal.  On  the 


510  TRANSVAAL 

contrary,  both  parties  to  this  proceeding  appeared  to  be  of  the 
opinion  that  they  are  the  only  two  persons  who  were  using  the 
words  as  a  trade  mark  in  the  Transvaal. 

The  contract  with  his  manufacturer,  under  which  the  appli- 
cant claimed  the  exclusive  right  to  the  use  of  the  label  in  that 
colony,  was  part  of  the  evidence  in  the  case,  and  the  registrar 
considered  it  clear,  from  the  terms  of  the  document,  that  the 
right  to  use  the  label  is  conditional ;  that  the  manufacturer  had 
not  sanctioned  its  registration,  either  in  his  own  name  or  that 
of  the  applicant ;  that  of  the  applicant,  moreover,  is  not  the 
proprietor  of  the  label  he  proposes  to  register,  except  in  so  far 
as  relates  to  his  own  portrait.  He,  being  merely  an  importer, 
is  not  entitled  to  register  to  himself  the  mark  of  the  manufac- 
turer or  exporter.  Registration  of  the  mark,  was,  therefore,  re- 
fused. (Fine  Bros.  Ltd.,  vs.  Berthold,  March  3,  1908.) 

In  the  second  case,  an  application  was  made  to  register  a 
trade  mark,  consisting  of  the  words,  "Bull's  Head"  and  the  de- 
vice of  a  bull's  head.  The  application  was  opposed  by  the  Royal 
Antediluvian  Order  of  Buffaloes,  an  order  which  had  been  estab- 
lished in  the  Transvaal  for  about  twenty  years  and  numbered 
ten  thousand  members.  It  appears  that  the  head  of  the  South 
African  buffalo  is  regarded  as  the  symbol  of  the  society  in  the 
Transvaal.  It  was  argued  in  behalf  of  the  opponents  that  the 
mark  applied  for  was  identical  with  the  emblem  of  the  society 
and  that  its  use  is  liable  to  lead  to  the  belief  that  the  appli- 
cant's business  is  carried  on  under  the  auspices  of  the  society. 

While  the  registrar  said  that  the  two  devices  are  for  all  prac- 
tical purposes  identical,  still,  it  did  not  appear  that  the  use  of 
the  mark  by  the  applicant  was  likely  to  result  in  any  injury  or 
loss  to  the  opponent.  The  opponent  society,  it  was  admitted, 
does  not  carry  on  any  trade  and  does  not  give  its  patronage  to 
any  trader  or  person.  Its  sole  ground  of  objection  is,  that  the 
society  is  averse  to  having  any  trader  represent  himself  as  trad- 
ing under  its  patronage.  It  was  argued  that  some  members 
would  be  misled  by  the  use  of  the  mark,  to  the  detriment  of 
other  traders.  While  it  was  conceivable,  the  Registrar  said,  that 
the  members  of  the  order,  seeing  the  device,  which  might  easily 
be  mistaken  for  that  of  a  buffalo's  head,  might  purchase  goods 
from  the  applicant,  there  was  no  evidence  that  the  society,  or  any 
person,  would  suffer  any  injury  or  loss,  from  the  registration 
of  the  mark.  The  objection  seems  to  be  based  upon  sentimental 
grounds  only,  and  the  facts  disclosed  will  not  justify  a  refusal 
of  registration.  (Royal  Antediluvian  Order  of  Buffaloes  vs. 
Smith,  December  20,  1910.) 

Similarity  of  Goods. 

In  January,  1909,  the  device  of  an  anchor,  crossed  by  the  let- 
ter "H"  and  used  with  the  word  "Anchor,"  was  adopted  as  a 


TRINIDAD  AND  TOBAGO  ^n 

trade  mark  for  bituminous  paint,  and  in  June  of  that  year  the 
trade  mark  was  registered  for  these  goods.  In  the  following 
year,  application  was  filed  by  another  firm,  to  register  a  trade 
mark  for  ordinary  oil  paints,  consisting  of  the  device  of  an  an- 
chor with  a  length  of  cable  attached,  which  mark  had  been  ex- 
tensively used  in  the  Transvaal  since  the  year  1906.  The  Regis- 
trar refused  to  proceed  with  the  registration,  without  the  spe- 
cial direction  of  the  court.  Recourse,  was,  therefore,  had  to  the 
court  for  an  order  directing  him  to  proceed  and  the  petition  was 
supported  by  affidavits,  showing  the  differences  in  the  nature 
and  uses  of  the  goods  to  which  the  marks  were  respectively  ap- 
plied and  showing  that  the  marks  had  in  fact  been  used  side 
by  side  without  confusion.  Moreover,  the  consent  of  the  first 
registrant  to  the  registration  of  the  second  mark  was  offered. 
The  Registrar  maintained  before  the  court  that  bituminous  paint 
and  oil  paints  were  goods  of  the  same  description,  within  the 
meaning  of  the  Trade  Mark  Act,  that  as  both  lines  of  goods  would 
be  known  as  the  "Anchor"  brand,  confusion  was  likely  to  re- 
sult; and  that  the  consent  of  the  registered  owner  of  the  first 
mark  was  not  conclusive  against  such  possibility  of  confusion. 
The  court  recognized  the  differences  between  the  goods  and,  re- 
garding confusion  as  improbable,  ordered  the  registration  of  the 
mark  for  which  application  was  made.  The  court  considered 
the  same  test  formulated  by  the  court  of  appeals  of  the  District 
of  Columbia  in  recent  decisions,  to-wit,  whether  or  not  a  person 
seeking  to  buy  the  one  article  might  be  led,  in  view  of  the  sim- 
ilarity of  the  marks,  to  accept  the  other  in  its  place.  By  this 
test,  it  was  held  to  be  clear  that  there  is  no  probability  of  con- 
fusion, since  no  one  wishing  to  buy  oil  paint  would  accept  bitu- 
minous paint  in  its  place,  or  vice  versa.  If,  indeed,  a  customer 
familiar  with  one  of  the  articles  were  led  by  the  similarity  of 
the  marks  to  try  the  other  article,  under  the  belief  that  it  came 
from  the  same  manufacturer,  he  would  none  the  less  be  obtain- 
ing what  he  wanted,  to-wit,  oil  paint  or  bituminous  paint,  as 
the  case  might  be,  and  the  only  person  who  could  possibly  be 
injured  would  be  the  trader  whose  reputation  brought  about  the 
second  sale.  If  he  makes  no  objection,  there  remains  no  other 
interest  to  be  considered.  (In  re  Wilkinson  Heywood  &  Clark, 
Ltd.,  June  19,  1911.) 


TRINIDAD  AND  TOBAGO 

These  islands  are  situated  near  the  northern  coast  of  Vene- 
zuela. The  southern  coast  of  Trinidad  being  distant  only  about 
15  miles  from  the  mainland,  nearly  opposite  the  mouth  of  the 
Orinoco,  Tobago  being  distant  about  20  miles  to  the  northeast  of 
Trinidad.  The  area  of  Trinidad  is  about  1,754  square  miles, 


512  TRINIDAD  AND  TOBAGO 

and  Tobago  about  120  square  miles.  The  latter  island  was  for- 
merly included  in  the  Windward  Group  of  islands,  but  by  an 
order  in  Council  of  20th  of  October,  1898,  Tobago  was  made  a 
ward  of  Trinidad  as  from  the  first  of  January,  1899.  The  esti- 
mated population  of  the  two  islands  is  344,500. 

The  principal  towns  are  (Trinidad)  Port  of  Spain  and  San 
Fernando,  (Tobago)  Scarborough  and  Plymouth. 

The  government  of  the  Colony  is  carried  on  by  the  Governor, 
assisted  by  an  Executive  Council  of  six  members ;  there  is  also 
a  legislative  body,  consisting  of  twenty-two  members. 

An  asphalt  lake  of  90  acres  exists  in  Trinidad  about  36  miles 
from  Port  of  Spain,  and  contains  an  apparently  inexhaustible 
supply  of  valuable  material,  which  is  exported  to  a  considerable 
extent.  It  was  leased  to  an  English  company  for  a  term  of 
twenty-one  years  from  January  1,  1888,  and  the  lease  has  since 
been  extended  for  a  further  twenty-one  years  from  1909. 

Coal,  manjak  and  petroleum  oil  have  recently  been  discovered, 
and  workings  in  regard  to  each  of  them  are  now  in  operation. 

MONEY,  WEIGHTS  AND  MEASURES — Same  as  Great  Britain. 

Law. 
Ordinance  No.  10  of  the  12th  of  March,  1900. 

Duration. 
Fourteen  years;  renewable. 

Requirements. 

Power  of  attorney ;  eight  copies  of  mark ;  electrotype  or  wood- 
cut. 

What  May  be  Registered. 

1.  For  the  purposes  of  this  Ordinance  a  trade  mark  must  con- 
sist of  or  contain  at  least  one  of  the  following  essential  par- 
ticulars:     (a)   A   name  of  an  individual   or  firm   printed,   im- 
pressed or  woven  in  some  particular  and  distinctive  manner ;  or 
(6)  A  written  signature  or  copy  of  a  written  signature  of  the 
individual  or  firm  applying  for  registration  thereof  as  a  trade 
mark;  or  (c)   A  distinctive  device,  mark,  brand,  heading,  label 
or  ticket;  or  (d)   An  invented  word  or  invented  words;  or  (e) 
A  word  or  words  having  no  reference  to  the  character  or  qual- 
ity of  the  goods,  and  not  being  a  geographical  name. 

2.  There  may  be  added  to  any  one  or  more  of  the  essential 
particulars  mentioned  in  this  section  any  letters,  words  or  fig- 
ures, or  combination  of  letters,  words  or  figures,  or  any  of  them, 
but  the  applicant  for  registration  of  any  such  additional  matter 
must  state  in  his  application  the  essential  particulars  of  the  trade 


TUNIS  513 

mark,  and  must  disclaim  in  his  application  any  right  to  the  ex- 
clusive use  of  the  added  matter,  and  a  copy  of  the  statement  and 
disclaimer  shall  be  entered  on  the  register. 

3.  Provided  as  follows:  (a)  A  person  need  not  under  this 
section  disclaim  his  own  name  or  the  foreign  equivalent  thereof, 
or  his  place  of  business ;  but  no  entry  of  any  such  name  shall 
affect  the  right  of  any  owner  of  the  same  name  to  use  that  name 
or  the  foreign  equivalent  thereof,  (b)  Any  special  and  distinc- 
tive word  or  words,  letter,  figure,  or  combination  of  letters  or 
figures,  or  of  letters  and  figures,  used  as  a  trade  mark,  either  in 
the  Colony  or  elsewhere,  before  the  thirteenth  day  of  August, 
1875,  may  be  registered  as  a  trade  mark.  (Art.  28.) 

Opposition  to  Registration. 

1.  Any  person  may,  within  three  months  of  the  first  adver- 
tisement of  the  application,  give  notice  in  duplicate  to  the  Reg- 
istrar of  opposition  to  registration  of  the  trade  mark,  and  the 
Registrar  shall  send  one  copy  of  such  notice  to  the  applicant. 

2.  Within  one  month  after  the  receipt  of  such  notice,  or  such 
further  time  as  the  Registrar  may  allow,  the  applicant  may  send 
to  the  Registrar  a  counter  statement  in  duplicate  of  the  grounds 
on  which  he  relies  for  his  application,  and,  if  he  does  not  do  so, 
shall  be  deemed  to  have  abandoned  his  application.     (Art.  33.) 

Infringement. 

The  infringement  of  a  trade  mark  may  be  restrained  and  dam- 
ages for  such  infringement  recovered  in  an  action  in  the  Su- 
preme Court,  if  such  trade  mark  has  been  registered,  or  if  reg- 
istration thereof  in  the  register  of  trade  marks  has  been  refused, 
but  in  no  other  case.  The  Registrar  may  on  request,  and  on 
payment  of  the  prescribed  fee,  grant  a  certificate  that  such  reg- 
istration has  been  refused.  (Art.  40.) 


TUNIS 

The  territory  of  Tunis  covers  about  51,000  square  miles,  with 
a  population  estimated  according  to  the  latest  computation  at 
1,900,000. 

There  are  several  good  ports  of  recent  construction ;  Tunis 
(by  Canal),  Bizerta  (by  Canal)  Susa  and  Sfax ;  at  all  of  which, 
vessels  can  draw  up  alongside  of  quays ;  also  Monastir,  Mehdia 
(anchorage  not  good),  Djerba,  Gabes,  Tabarca  and  Gallippia. 

38 


514  TUNIS 

MONEY— The  franc=9  l/2d.=19  cents  U.  S. 
WEIGHTS  AND  MEASURES — The  metric  system 

Law. 
Du  5  Chaoual  1306   (3  Juin  1889). 

Decree. 
Du  4  Rabia  Ettani  1310  (25  Octobre  1892). 

Duration. 

The  registration  has  effect  for  a  period  of  fifteen  years.  The 
property  in  a  trade  mark  may  always  be  preserved  for  a  further 
term  of  fifteen  years  by  new  registration.  (Art.  10.) 

Who  May  Register. 

Foreigners  engaged  in  industrial  and  commercial  pursuits  in 
Tunis  are  entitled  to  adopt  a  special  mark  for  their  products ; 
they  will  enjoy  all  the  advantages  and  guarantees  afforded  by 
the  Regulations. 

Requirements. 

Power  of  attorney;  three  copies  of  the  Mark;  one  electro- 
type; full  name,  address  and  occupation  of  the  applicant,  and 
also  a  statement  of  the  goods  to  be  covered  by  the  mark. 

Penalties. 

Will  be  punished  by  a  fine  of  from  30  francs  to  1,800  francs, 
and  by  imprisonment  from  three  months  to  three  years,  or  by 
one  of  these  penalties  only: 

1.  Those  who  have  counterfeited  a  trade  mark  or  made  use 
of  a  counterfeited  trade  mark. 

2.  Those  who  have   fraudulently   affixed   on   their   products 
or  the  articles  of  their  commerce  a  trade  mark  belonging  to  an- 
other party. 

3.  Those  who  have  knowingly  sold  or  offered  for  sale  one 
or  more  products  bearing  trade   mark  either   counterfeited   or 
fraudulently  affixed.     (Art.  15.) 

Will  be  punished  by  a  fine  of  from  30  francs  to  1,200  francs, 
and  by  imprisonment  of  from  one  month  to  one  year,  or  by  one 
of  these  penalties  only: 

1.  Those  who  without  counterfeiting    a    trade    mark    have 
fraudulently  imitated  the  same  so  nearly  as  to  deceive  a  pur- 
chaser,  or  who  have  made  use  of  a  trade  mark  fraudulently 
imitated. 

2.  Those  who  have  made  use  of  a  mark  bearing  indications 


TUNIS  515 

of  a  kind  to  deceive  a  purchaser  as  to  the  nature  of  the  prod- 
ucts. 

3.  Those  who  have  knowingly  sold  or  offered  for  sale  one 
or  more  products  bearing:  a  trade  mark  fraudulently  imitated 
or  bearing-  indications  of  a  kind  to  deceive  a  purchaser  as  to  the 
nature  of  the  products.  (Art.  16.) 

Jurisdiction. 

Only  the  jurisdiction  of  the  French  Tribunal  is  competent  in 
all  contested  cases. 

International  Registrations  in  Tunis. 

It  is  held  by  the  Court  of  Algiers,  first  chamber,  that  where 
a  mark  has  been  registered  by  one  person  in  Tunis,  and  by 
another  party  with  the  International  Bureau  at  Berne,  which 
latter  registration  has  been  communicated  at  Tunis  under  the 
terms  of  the  International  arrangement  for  the  registration  of 
trade  marks,  the  courts  of  Tunis  have  jurisdiction  to  entertain 
an  action  for  infringement,  brought  by  him  who  registered  his 
mark  directly  in  Tunis,  against  the  owner  of  the  International 
registration,  because  the  notice  sent  from  the  International  Bu- 
reau was  tantamount  to  a  registration  of  the  mark  in  Tunis, 
affording  it  the  same  protection  as  if  it  had  been  registered  there 
originally.  The  question  is,  therefore,  to  be  determined  in  the 
same  way  as  in  the  case  of  two  conflicting  registrations  in  Tunis. 
(Fouger  vs.  Societe  Agricola,  Annales  de  la  Prop.  Ind.,  October, 
1907.) 

Unfair  Competition. 

The  civil  court  of  Tunis  has  held  that  it  is  unfair  competition 
to  refill  bottles  belon^ine  to  a  rival  concern  with  a  beverage  of 
one's  own  manufacture  and  to  sell  the  same  to  dealers  for  resale 
to  the  consumer,  under  the  mark  of  a  rival  concern  which  ap- 
pears upon  the  bottles.  Such  an  act  is  likely  to  produce  con- 
fusion to  the  damage  of  the  latter.  The  alleged  good  faith  of 
the  trader  who  does  this  can  not  be  pleaded  in  defense,  for  even 
if  he  did  not  seek  to  deceive  the  purchasers  he  should  very 
readilv  see  the  consequences  which  might  result  from  the  use 
of  these  bottles  bearing  a  mark  not  his  own  and  filled  with  his 
products.  (Annales  de  la  Prop.  Ind.,  1910,  p.  35.) 

Law  in  Force  in  Tunis  to  Prevent  the  Sale  or  Importation  of 
Goods  Bearing  a  False  Indication  of  Origin. 

It  would  appear  that  goods  bearing  a  false  indication  of  origin 
can  be  seized  on  importation  or  in  the  interior,  or  be  prohibited 
from  importation  by  the  action  of  the  Customs,  of  the  Public 
Prosecutor,  or  of  parties  liable  to  be  injured,  in  accordance  with 


516  TURKEY 

• 

the  Arrangement  of  Madrid  (1891)  which  Tunis  has  joined. 
The  Laws  also  afford  protection  against  the  fraudulent  use  of 
a  trade  name  and  the  reproduction  or  imitation  of  trade  marks 
registered  in  Tunis.  In  cases  of  false  indication  of  origin  the 
Public  Prosecutor  should  prosecute  on  the  complaint  of  injured 
parties  or  of  the  representatives  of  foreign  governments  that 
have  adhered  to  the  Convention  of  Paris  (1883),  and  the  Ar- 
rangement of  Madrid  (1891)  ;  injured  parties  may  also  join  in 
the  public  prosecution  or  sue  before  Civil  Courts.  No  cost  is 
entailed  on  complainants  if  the  Public  Prosecutor  alone  under- 
takes the  prosecution.  There  appear  to  be  no  Laws  or  Regula- 
tions as  to  the  marking  of  imported  goods  with  an  indication  of 
the  country  of  origin. 

Marking  of  Goods:    "Marque  deposee." 


TURKEY 

The  area  of  the  Turkish  Dominion  (including  Egypt,  Samos, 
Crete  and  Tripoli)  is  about  1,560,000  English  square  miles,  of 
which  about  65,000  are  situated  in  Europe  and  the  rest  in  Asia 
and  Africa.  The  population  is  estimated  at  35,178,000.  The 
principal  imports  are  drapery  goods,  sugar,  cereals,  pique,  files, 
coffee,  etc. 

MONEY,  WEIGHTS  AND  MEASURES — Same  as  Great  Britain. 

Law. 
Regulation  May  10,  1888.     29  Shaban,  1305. 

Term. 

The  privileges  of  a  trade  mark  which  has  been  registered  in 
accordance  with  the  stipulations  of  Article  3,  can  only  be  enjoyed 
for  a  term  of  fifteen  years;  the  right  of  exclusive  ownership  of 
a  trade  mark  can  be  renewed  for  another  term  of  fifteen  years, 
provided  the  formalities  in  Article  3  are  again  accomplished. 
(Art.  4.) 

Who  May  Apply. 

Foreigners  engaged  in  industrial  or  commercial  pursuits  in 
Turkey  are  equally  entitled  to  adopt  special  marks  for  the  prod- 
uce of  their  industrial  establishments  and  articles  of  commerce, 
on  condition  that  the  stipulations  of  the  present  Regulations  are 
strictly  complied  with ;  they  will  then  enjoy  all  the  advantages 
and  guarantees  afforded  by  these  Regulations,  Should  any  liti- 
gation arise  on  the  subject  of  trade  marks,  the  case  will  be  tried 
in  the  Turkish  courts  in  accordance  with  the  provisions  of  these 


TURKEY  517 

Regulations   (Article  2),  even  though  contending  parties  be  of 
foreign  nationality.     (Art.  6.) 

What  May  be  Registered. 

All  names,  seals,  descriptions,  stamps,  letters,  numbers,  special 
coverings  or  wrappers,  and  other  distinctive  signs  used  on  goods 
and  manufactured  articles,  for  the  purpose  of  distinguishing  the 
locality  and  place  of  manufacture,  the  name  of  the  manufacturer, 
or  of  the  dealer.  (Art.  1.) 

The  usage  or  adoption  of  trade  marks  for  manufactured  arti- 
cles and  merchandise  is  not  compulsory;  the  Government,  how- 
ever, may,  when  necessary,  insist  upon  the  adoption  of  trade 
marks  for  certain  products.  It  is  clearly  understood  that  all 
emblems  adopted  as  trade  marks  must  not  be  of  a  seditious  char- 
acter, or  at  variance  with  public  order  and  morals.  (Art.  2.) 

It  is  necessary  here  to  point  out  that  signs  and  symbols,  such 
as  the  Star  and  Crescent,  the  Crescent  only,  or  the  national  arms 
of  any  country,  are  not  accepted  as  trade  marks. 

The  Ministry  of  Police  also  refuse  to  permit  the  use  of  such 
words  as  Emperor,  King,  Queen,  Prince,  Princess  in  trade  marks, 
and  great  care  must  be  exercised  in  avoiding  anything  having  the 
slightest  reference  to  the  Sultan  or  to  Islamism. 

Formalities  for  the  Registration  of  Trade  Marks. 

Any  person  desiring  to  register  his  trade  mark  must  submit 
and  deposit  either  in  person  or  through  an  agent  duly  empowered 
by  power  of  attorney  to  act  in  this  special  matter,  two  facsimiles 
of  his  trade  mark,  at  the  offices  of  the  Ministry  of  Commerce  in 
Constantinople,  or,  in  the  provinces,  at  the  office  of  the  Admin- 
istrative Council  of  the  district  in  which  he  resides. 

Should  the  mark  consist  of  a  special  stamp  or  seal,  two  fac- 
similies  will  be  necessary.  If  the  distinctive  mark  be  of  a  differ- 
ent nature,  two  exact  designs  of  the  original,  as  well  as  docu- 
ments duly  signed  and  attested,  and  giving  all  the  necessary  ex- 
planations, will  be  required.  In  the  case  .of  a  registration  being 
effected  through  an  agent,  the  power  of  attorney  must  be  at- 
tached to  the  copies  of  the  trade  mark  and  to  the  explanatory 
documents.  (Art.  7.) 

The  Chief  Clerk  of  the  Council  shall  then  fix  one  of  the  fac- 
similes of  the  mark  on  a  special  page  of  a  book  kept  for  the 
purpose,  and  will  make  the  following  entries: 

1.  The  date  on  which  the  mark  was  submitted. 

2.  The  name  of  the  owner  of  the  trade  mark  or  of  his  agent. 

3.  Profession  or  trade  and  residence  of  the  owner. 

4.  The  nature  of  the  articles  or  merchandise  for  which  the 
trade  mark  is  intended. 

5.  The  consecutive  number  of  registration. 


518  TURKEY 

These  entries  will  then  be  signed  and  sealed  at  the  Ministry 
of  Commerce,  if  the  registration  is  effected  in  Constantinople, 
but  if  in  the  provinces,  by  the  Administrative  Council.  The  pro- 
prietor of  the  trade  mark  or  his  agent  will  also  sign. 

The  second  facsimile,  or  design  of  trade  mark,  will  be  gummed 
to  a  sheet  of  paper,  on  which  the  aforementioned  entries  will  be 
copied  in  full,  and  this  sheet  having  been  duly  signed  and  sealed 
by  the  owner  of  the  trade  mark  or  by  his  authorized  agent,  will 
be  forwarded  to  the  Ministry  of  Justice. 

In  cases  where  the  trade  mark,  or  the  design  of  the  trade 
mark,  has  been  deposited  at  the  Administrative  Council  in  the 
provinces,  a  third  specimen  will  be  required  for  transmission  to 
the  Ministry  of  Commerce.  (Art.  8.) 

Upon  the  fulfillment  of  the  formalities  enumerated  in  the  fore- 
going Articles,  and  on  the  payment  of  the  fees,  a  provisional  cer- 
tificate (Muvakat  Ilmuhaberi),  signed  by  the  Ministry  of  Com- 
merce in  Constantinople,  or,  if  in  the  provinces,  by  the  Admin- 
istrative Council,  will  be  delivered  to  the  owner  of  the  trade 
mark.  This  provisional  document  will  be  changed  later  on  for 
a  definite  certificate  issued  by  the  Ministry  of  Justice.  (Art.  9.) 

The  facsimile  or  design  of  trade  mark,  with  the  copy  of  the 
registration  mentioned  in  Article  8,  shall  be  forwarded  at  the 
earliest  opportunity,  by  the  Governor-General  of  the  province  to 
the  Ministry  of  Justice,  where  these  documents  are  to  be  regis- 
tered and  kept  The  Ministry  of  Justice  will  then,  within  a 
month  after  receipt  of  these  documents,  forward  the  official  and 
printed  certificate  to  the  Governor-General.  (Art.  10.) 

Fees. 

A  fee  of  from  i  T.  Zl/2  to  £  T.  5  is  charged  for  the  certifi- 
cates of  registration;  these  fees  are  to  be  paid  in  Constantino- 
ple into  the  Ministry  of  Commerce,  and  in  the  provinces  to  the 
Councils  of  Administration,  who  are  enjoined  to  remit  all  such 
payments  to  the  Ministry  of  Commerce.  (Art.  5.) 

Although  the  fees  for  the  registration  of  a  trade  mark  are 
fixed  by  Article  5  at  from  £  T.  2^2  to  £  T.  5,  the  maximum 
fee  is  invariably  charged  for  the  registration  of  a  trade  mark 
consisting  of  only  one  sign  or  symbol. 

In  cases  where  a  trade  mark  consists  of  several  distinctive 
signs,  the  fee  charged  for  the  first  sign  is  £  T.  5,  the  second  £ 
T.  3,  and  every  following  mark  is  charged  at  the  minimum  rate 
of  £  T.  2 1/2  for  each  mark,  although  only  one  certificate  is  issued 
for  the  whole  number  of  marks. 

Should,  however,  a  separate  certificate  of  registration  be  re- 
quired for  each  distinctive  sign,  which  together  form  one  trade 
mark,  the  maximum  fee  is  charged  for  each  certificate  issued. 


TURKEY  519 

Assignments. 

The  exclusive  ownership  of  a  trade  mark  can  be  ceded  by  the 
owner  to  a  third  person,  with  the  assent  of  the  Imperial  Otto- 
man Government.  In  case  of  decease  of  the  owner  of  a  trade 
mark,  the  exclusive  ownership  is  likewise  inherited  by  the  heirs. 
(Art.  4.) 

The  formalities  for  transferring  the  right  of  ownership  of  a 
registered  trade  mark  are  made  at  the  Ministry  of  Commerce 
free  of  charge. 

Legal  Procedure. 

No  person  can  claim  an  exclusive  ownership  to  a  trade  mark 
nor  can  he  prosecute  any  person  imitating  such  a  mark,  unless 
the  claimant  has  previously  submitted  two  facsimiles  of  the  mark 
he  has  adopted  in  Constantinople  to  the  Ministries  of  Commerce 
and  Justice,  and  in  the  provinces  to  the  Administrative  Council 
as  well  as  to  the  Appeal  Court  of  the  district  in  which  he  re- 
sides, and  subject  to  the  terms  mentioned  in  the  second  chapter 
of  the  present  Regulations.  (Art.  3.) 

Civil  actions  in  matters  concerning  trade  marks  are  brought 
before  the  Courts  of  First  Instance  of  the  Empire,  and  are  sum- 
marily tried  before  these  Courts. 

Should  cases  be  brought  before  the  Criminal  Courts,  and  ques- 
tions relative  to  the  ownership  of  a  trade  mark  be  raised  by  the 
defendant,  such  questions  shall  also  be  tried  and  decided  by  the 
Criminal  Court.  (Art.  11.) 

The  owner  of  the  trade  mark  may  obtain,  through  the  Court, 
a  detailed  description  of  the  nature,  duality,  and  quantity  of 
merchandise  which  he  asserts  bears  his  trade  mark,  and  which 
he  contends  constitute  the  infringement  of  the  present  Regula- 
tions. The  owner  of  the  trade  mark  may  also,  if  necessary, 
obtain  an  order  from  the  Court  for  the  seizure  of  such  mer- 
chandise. 

The  order  will  be  granted  on  the  petition  of  the  plaintiff,  and 
subject  to  the  presentation  to  the  Court  of  the  certificate  (Ilmu- 
haber)  testifying  to  the  registration  of  the  trade  mark.  The 
Court  will,  if  it  is  considered  desirable,  appoint  an  expert,  whose 
duty  it  will  be  to  assist  the  officers  of  the  Court  in  effecting  the 
seizure. 

In  cases  where  an  application  is  made  for  the  seizure  of  mer- 
chandise, the  Court  may,  if  necessary,  require  the  deposit  of  a 
security  in  money  by  the  plaintiff  before  granting  such  an  order. 

Copies  of  the  order  of  seizure,  as  well  as  of  the  instrument 
certifying  that  a  security  in  money  has  been  deposited,  must  be 
delivered  to  the  person  in  whose  possession  the  merchandise  seized 
was  found.  In  case  of  non-compliance  with  the  aforementioned 
formality,  i.  e.,  if  the  copies  of  the  said  documents  have  not  been 


520  TURKEY 

delivered  to  the  defendant,  the  measures  taken  shall  be  consid- 
ered null  and  void,  and  the  official  culpable  of  such  negligence 
will  be  held  liable  for  damages.  (Art.  12.) 

The  distance  between  the  locality  where  the  merchandise  was 
found,  noted,  and  seized,  and  the  residence  of  the  defendant, 
shall  be  determined  by  days — six  hours  being  considered  the 
equivalent  of  a  day.  If  no  legal  action  is  taken  within  fifteen 
days,  beyond  the  number  of  days  allowed  for  distance  of  resi- 
dence, the  inventory  of  the  merchandise,  as  well  as  the  seizure, 
will  be  considered  null  and  void;  this  will  not,  however,  affect 
the  right  of  the  plaintiff  to  bring  an  action  against  the  defendant 
for  damages.  (Art.  13.) 

Penalties. 

A  fine  of  from  £  T.  1  to  i  T.  50,  or  an  imprisonment  for 
a  term  of  from  one  to  six  months,  or  both  penalties,  according 
to  the  gravity  of  the  following  offenses : 

1.  Any  person  guilty  of  imitating  a  trade  mark  which  has 
been  duly  registered  in  conformity  with  the  conditions  of  the 
present   Regulations,   and   any  persons  who  may  have   used  a 
fraudulent  trade  mark. 

2.  Persons  who  have  marked  their  goods  with  trade  marks, 
the  property  of  others. 

3.  Persons  who  knowingly  have  sold,  or  have  offered  to  sell 
one  or  more  kinds  of  goods,  marked  with  fraudulent  trade  marks, 
or  bearing  marks  which  have  been  fraudulently  affixed.     (Art. 
14.) 

A  fine  of  from  £  T.  2  to  £  T.  30,  or  to  an  imprisonment  of 
from  one  week  to  two  months,  or  to  both  of  these  penalties,  ac- 
cording to  the  pravity  of  the  following  offenses: 

1.  Such  persons  as  may  have  altered  a  trade  mark  with  intent 
to  defraud,  or  have  made  use  of  such  trade  mark. 

2.  Such  persons  as  may  .have  used  the  trade  marks  of  a  spe- 
cial class  of  goods  or  articles  for  some  other  class  of  goods  or 
articles,  with  the  intention  of  defrauding  the  buyer,  as  to  the 
quality  of  the  goods  or  articles. 

3.  Persons  who  knowinglv  rteve  offered  such  goods  for  sale. 
(Art.  15.) 

A  fine  of  from  i  T.  1  to  £  T.  10,  or  to  an  imprisonment  of 
from  twenty-four  hours  to  a  week,  or  to  both  penalties,  accord- 
ing to  the  gravity  of  the  following  offense: 

Such  persons  as  may  not  have  placed  on  the  goods  and  arti- 
cles indicated  by  the  Ministry  of  Commerce,  the  necessary  trade 
mark  as  stated  in  Article  2,  as  well  as  those  persons  who  may 
have-  sold  or  caused  to  be  sold  goods  not  bearing  the  recognized 
registered  trade  marks.  (Art.  16.) 

Should  any  person  be  convicted  of  more  than  one  of  the  of- 


TURKEY  521 

fenses  enumerated  above,  the  penalty  prescribed  for  the  most 
serious  of  these  offenses  shall  be  inflicted.  (Art.  17.) 

In  the  case  of  second  conviction,  the  penalty  to  be  imposed 
must  be  equal  to  double  the  penalty  inflicted  in  the  first  case. 
Any  person  found  committing  one  of  these  offenses  five  years 
after  the  date  of  first  conviction  shall  be  liable  to  a  second  con- 
viction. (Art.  18.) 

The  Court  may  order  the  confiscation  of  goods  bearing  trade 
marks  which  have  not  fulfilled  the  stipulations  of  Articles  14 
and  15,  as  well  as  the  instruments  and  tools  specially  employed 
in  the  making  of  such  trade  marks,  even  when  the  accused 
party  has  already  been  convicted  and  condemned.  The  Court 
may  order  the  delivery  of  goods  bearing  a  forged  trade  mark, 
or  marks  belonging  to  others,  and  which  have  been  confiscated, 
to  the  proprietor  of  the  genuine  trade  mark.  The  value  of  such 
goods  may  be  assessed,  and  if  necessary,  be  given  as  part  com- 
pensation for  the  damages  claimed.  In  all  cases,  trade  marks 
recognized  as  not  having  complied  with  the  conditions  of  Arti- 
cles 14  and  15,  shall  be  destroyed.  (Art.  19.) 

Persons  who  shall  have  sold,  or  who  have  caused  or  offered 
to  sell,  o-oods  not  bearing  the  trade  marks  registered  specially  for 
that  particular  class  of  goods,  will  incur  the  penalty  mentioned 
in  Article  15,  and  will,  at  the  same  time,  be  compelled  to  affix 
the  authorized  trade  mark  for  such  goods.  In  cases  of  recur- 
rence of  such  an  offense,  within  five  years  after  the  date  of  the 
first  conviction,  the  Court  may  order  the  confiscation  of  the 
goods.  (Art.  20.) 

A  fine  of  from  i  T.  2  to  £  T.  50,  or,  to  an  imprisonment  of 
from  one  to  six  months,  or  both  penalties,  according  to  the  gravity 
of  the  following  offense: 

Persons  convicted  of  affixing  on  goods,  either  in  full,  or  by 
any  other  means,  the  name  of  a  locality  within  the  Ottoman 
Empire,  other  than  the  real  place  of  origin  of  such  goods,  and 
persons  who  knowingly  may  have  sold  or  offered  such  goods  for 
sale.  (Art.  21.) 

All  cases  prosecuted  under  Article  21  shall  be  tried  in  accord- 
ance with  the  terms  of  the  present  Regulations  respecting  legal 
procedure.  (Art.  22.) 

Goods  discharged  into  Custom  House,  and  bearing  fraudulent 
marks,  as  well  as  the  name  of  a  locality  or  country,  will  not  be 
refused  entry  into  the  Empire.  The  owners  of  the  genuine  trade 
marks  lose  none  of  their  rights  to  prosecute  the  offenders  should 
their  trade  marks  have  been  imitated  abroad.  If,  however,  for- 
eign imitations  of  Ottoman  products,  and  bearing  fraudulent 
trade  marks,  are  introduced  into  the  Empire,  such  goods  will 
be  refused  entry  into  the  country,  and  will  be  returned  to  the 
owners. 

Unclaimed  goods  will  be  allowed  to  remain,  and  will  be  stored 


522  UNITED  STATES  OF  AMERICA 

in  the  Custom  House  for  a  period  of  one  year.  If,  at  the  expira- 
tion of  that  term,  it  should  be  found  impossible,  owing  to  deter- 
ioration, to  keep  such  goods  in  store  for  a  second  year,  the  coun- 
terfeit trade  marks  shall  first  be  destroyed,  and  the  goods  shall 
then  be  sold  by  auction.  The  proceeds  of  the  sale  of  such  goods, 
after  deduction  has  been  made  of  the  storage  charges,  will  be 
held  in  deposit  by  the  Customs  Administration  and  will  be  paid 
to  the  owner  of  the  goods,  should  he  present  his  claims  before  the 
end  of  the  second  year.  In  default  of  any  such  claim  being  filed 
within  the  period  stated,  the  sum  in  deposit  will  revert  to  the 
Customs  Administration. 

Goods  which  have  been  seized  by  the  Custom's  authorities  and 
which  have  not  been  claimed  by  the  owner  within  a  year  from 
date  of  seizure,  will  be  destroyed  when  it  is  found  impossible  to 
efface  the  trade  mark.  (Art.  23.) 

The  Turkish  Government  has  issued  an  order  to  its  custom 
authorities  to  admit  no  foreign  goods  which  bear  the  mark  or 
design  of  a  star.  It  is  supposed  that  the  reason  for  this  is  that 
the  representation  of  a  star  is  a  part  of  the  Turkish  coat  of  arms. 

Laws  in  Force  in  Turkey  to  Prevent  the  Sale  or  Importation  of 
Goods  Bearing  a  False  Indication  of  Origin. 

There  are  no  laws  or  regulations  in  force  relating  to  the  im- 
portation or  sale  of  goods  bearing  a  false  indication  of  origin. 

Marking  Goods :  "Trade  Mark  Registered,"  or  "Marque  de- 
posee,"  or  in  Turkish  language. 


UNITED  STATES  OF  AMERICA 

The  United  States  of  America  occupy  the  entire  width  of  the 
central  portion  of  North  America.  They  are  bounded  north  by 
New  Brunswick,  Canada  (from  which  they  are  separated  by  the 
River  St.  Lawrence  and  the  Great  Lakes)  and  British  Columbia ; 
on  the  south  by  Mexico  and  the  Gulf  of  Mexico;  east  by  the 
Atlantic  and  west  by  the  Pacific  Ocean.  Including  Alaska,  the 
entire  area  of  the  United  States  and  territories  is  3,756,884 
square  miles.  The  total  population  in  1910  was  91,972,266. 

The  principal  imports  are  coffee,  cocoa,  tea,  sugar,  chemicals, 
fibers,  fur  skins,  hides  and  skins,  fruit,  raw  and  manufactured 
silk,  India  rubber,  iron  and  steel  goods,  oils,  tobacco,  wines,  wool 
and  woolen  goods,  cotton  goods,  cotton  for  manufacturing,  tin, 
jewelry,  etc. 

The  progress  of  the  cotton  plant  in  the  Southern  States  of 


UNITED  STATES  OF  AMERICA  523 

America  is  interesting.  The  general  impoverishment  of  the  south 
at  the  termination  of  the  war  tended  to  such  improvements  in 
the  cultivation  of  the  crop  that  the  average  of  the  yields  of  cot- 
ton is  now  considerably  in  excess  of  the  yield  previous  to  the 
war.  For  example,  the  yield  of  cotton  under  slave  labor  was 
about  3,000,000  bales,  while  at  the  present  time  the  yield  is  more 
than  four  times  that  much. 

MONEY— 1  dollar  (100  cents)  =49. 32d. 

WEIGHTS  AND  MEASURES — Same  as  Great  Britain  with  the  fol- 
lowing exceptions : 

1  wine  gallon=O.S3333  gallon. 

1  ale=1.01695  gallon. 

1  bushel=0.9692  Imperial  bushel. 

1  short  ton=2,000  Lbs. 

1  long  ton=2,240  Lbs. 

Trade  Mark  Lan's  of  the  United  States. 

Act  of  February  20,  1905. 

The  first  Federal  Trade  Mark  Law,  the  Act  of  July  8,  1870, 
was  declared  unconstitutional,  U.  S.  v.  Steffens,  100  U.  S.,  82; 
the  second,  the  Act  of  March  3,  1881,  had  many  defects,  among 
which  was  the  failure  to  provide  for  the  registration  of  marks 
used  in  interstate  commerce,  and  the  third  law  is  the  Act  of 
February  20,  1905,  which  is  now  in  force. 

Term. 

A  certificate  of  registration  shall  remain  in  force  twenty  years 
from  its  date,  except  that,  in  case  a  trade  mark  be  previously 
registered  in  a  foreign  country,  such  certificate  shall  cease  to  be 
in  force  on  the  day  on  which  the  trade  mark  ceases  to  be  pro- 
tected in  such  foreign  country,  and  shall,  in  no  case,  remain  in 
force  more  than  twenty  years,  unless  renewed. 

A  certificate  of  registration  may  be.  from  time  to  time,  re- 
newed for  like  periods  on  payment  of  the  renewal  fees  required, 
upon  request  by  the  registrant,  his  legal  representatives,  or  trans- 
ferees of  record  in  the  Patent  Office,  and  such  request  may  be 
made  at  any  time  not  more  than  six  months  prior  to  the  expira- 
tion of  the  period  for  which  the  certificate  of  registration  was 
issued  or  renewed. 

Who  May  Register  a  Trade  Mark. 

A  trade  mark  may  be  registered  by  any  person,  firm,  corpora- 
tion, or  association  domiciled  within  the  territory  of  the  United 
States,  or  residing  in  or  located  in  any  foreign  country  which, 
by  treaty,  convention,  or  law,  affords  similar  privileges  to  the 


524  UNITED  STATES  OF  AMERICA 

citizens  of  the  United  States,  and  who  is  the  owner  of  such  trade 
mark,  and  uses  the  same  in  commerce  with  foreign  nations, 
or  among  the  several  States,  or  with  the  Indian  tribes,  upon 
payment  of  the  fee  required  by  law  and  other  due  proceedings 
had. 

The  statute  specifies  that  the  "owner"  of  a  trade  mark  may  ob- 
tain registration.  The  application  must  not  be  made  by  a  gen- 
eral agent,  a  manager,  a  licensee  or  any  one  except  the  owner. 
It  is  only  necessary  to  refer  to  Section  2  of  the  Act  to  emphasize 
this  point.  This  section  provides  that,  in  order  to  create  any 
right  in  favor  of  the  party  filing  the  application,  it  must  be  ac- 
companied by  a  declaration  to  the  effect  that  the  applicant,  or 
a  member  of  a  firm,  or  an  officer  of  a  corporation  or  an  associa- 
tion, believes  himself  or  the  firm,  corporation  or  association,  in 
whose  behalf  he  makes  the  application,  to  be  the  owner  of  the 
mark,  and  that  no  one  else  has  the  right  to  use  such  trade  mark. 
The  statute  does  not  appear  to  contemplate  the  registration  of  a 
mark  to  joint  owners;  registration  can  be  obtained  only  by  an 
individual,  a  firm,  a  corporation,  or  an  association.  The  United 
State  Patent  Office  has  consistently  refused  to  register  to  joint 
applicants. 

If  there  is  any  doubt  as  to  the  ownership  of  a  mark  this  should 
be  cleared  up  before  the  application  is  filed.  To  do  otherwise 
is  to  run  the  risk  of  losing  the  advantage  of  an  early  filing  date, 
and  probably  considerable  useless  expense  will  be  incurred  and 
the  government  fee  will  be  lost,  as  money  will  not  be  repaid 
unless  it  is  paid  by  actual  mistake. 

In  one  case  the  Patent  Office  held  that  after  an  application 
had  been  filed  in  the  name  of  a  company,  substitute  papers  show- 
ing that  the  name  of  the  company  had  been  changed  and  that  this 
latter  company  was  the  owner  of  the  mark,  should  not  be  en- 
tered. (Ex  parte  Certain  Cure  Co.,  147  O.  G.,  772.) 

Except  as  provided  by  Section  3  of  the  Act  of  May  4,  1906, 
no  trade  mark  will  be  registered  to  an  applicant  residing  or  lo- 
cated in  a  foreign  country  unless  such  country,  by  treaty,  con- 
vention, or  law,  affords  similar  privileges  to  the  citizens  of  the 
United  States,  nor  unless  the  trade  mark  has  been  registered  by 
the  applicant  in  the  foreign  country  in  which  he  resides  or  is 
located,  nor  until  such  applicant  has  filed  in  this  office  a  certi- 
fied copy  of  the  certificate  of  registration  of  his  trade  mark  in 
the  country  where  he  resides  or  is  located.  In  such  cases  it  is 
not  necessary  to  state  in  the  application  that  the  trade  mark  has 
been  used  in  commerce  with  the  United  States  or  among  the 
several  States  thereof. 

In  addition  to  an  owner  of  a  trade  mark  who  is  domiciled  in 
the  United  States,  application  for  registration  may  be  made  by 
an  owner  who  resides  in  a  foreign  country  which  by  treaty  or 


UNITED  STATES  OF  AMERICA  525 

law  affords  similar  privileges  to  citizens  of  the  United  States. 
By  similar  privilege  is  not  meant  the  privilege  of  registration 
under  a  law  of  the  scope  and  character  of  ours,  but  a  country 
which  permits  citizens  of  the  United  States  to  register  in  that 
country.  It  has  been  held  that  if  an  applicant  is  located  in  a 
foreign  country  other  than  that  of  which  he  is  a  citizen,  his  ap- 
plication will  be  governed  by  the  law  of  the  country  of  location 
rather  than  that  of  citizenship.  (Ex  parte  Haggenmacher,  60 
O.  G.,  438.) 

Not  Registrable  Trade  Marks. 

No  trade  mark  will  be  registered  to  an  owner  domiciled  within 
the  territory  of  the  United  States  unless  it  shall  be  made  to  ap- 
pear that  the  same  is  used  as  such  by  said  owner  in  commerce 
among  the  several  States,  or  between  the  United  States  and 
some  foreign  nation  or  Indian  tribe ;  no  trade  mark,  except  as 
provided  by  Section  3  of  the  Act  of  May  4,  1906,  will  be  reg- 
istered to  an  owner  residing  in  or  located  in  a  foreign  country 
unless  said  country,  by  treaty,  convention,  or  law,  affords  similar 
privileges  to  the  citizens  of  the  United  States;  no  trade  mark 
will  be  registered  which  consists  of  or  comprises  immoral  or 
scandalous  matter,  or  which  consists  of  or  comprises  the  flag  or 
coat  of  arms  or  other  insignia  of  the  United  States  or  any 
simulation  thereof,  or  of  any  State  or  municipality,  or  of  any 
foreign  nation,  or  which  consists  of  or  comprises  any  design  or 
picture  that  has  been  adopted  by  any  fraternal  society  as  its 
emblem,  unless  it  shall  be  shown  to  the  satisfaction  of  the  Com- 
missioner of  Patents  that  the  mark  was  adopted  and  used  as  a 
trade  mark  by  the  applicant  or  applicant's  predecessors,  from 
whom  title  is  derived,  at  a  date  prior  to  the  date  of  its  adoption 
by  such  fraternal  society  as  its  emblem,  or  which  trade  mark 
is  identical  with  a  registered  or  known  trade  mark  owned  and 
in  use  by  another,  and  appropriated  to  merchandise  of  the  same 
descriptive  properties,  or  which  so  nearly  resembles  a  registered 
or  known  trade  mark  owned  and  in  use  by  another,  and  appro- 
priated to  merchandise  of  the  same  descriptive  properties  as  to 
be  likely  to  cause  confusion  or  mistake  in  the  mind  of  the  pub- 
lic, or  to  deceive  purchasers ;  or  which  consists  merely  in  the 
name  of  an  individual,  firm,  corporation,  or  association,  not 
written,  printed,  impressed,  or  woven  in  some  particular  or  dis- 
tinctive manner  or  in  association  with  a  portrait  of  the  individ- 
ual, or  merely  in  words  or  devices  which  are  descriptive  of  the 
goods  with  which  they  are  used,  or  of  the  charcter  or  quality 
of  such  goods,  or  merely  a  geographical  name  or  term ;  no  por- 
trait of  a  living  individual  will  be  registered  as  a  trade  mark, 
except  by  the  consent  of  such  individual  evidenced  by  an  instru- 
ment in  writing ;  and  no  trade  mark  will  be  registered  which  is 
used  in  unlawful  business,  or  upon  any  article  injurious  in  it- 


526  UNITED  STATES  OF  AMERICA 

self,  or  which  has  been  used  with  the  design  of  deceiving  the 
public  in  the  purchase  of  merchandise,  or  which  has  been  aban- 
doned. 

Any  mark,  used  in  commerce  with  foreign  nations  or  among 
the  several  States  or  with  Indian  tribes,  may  be  registered  if  it 
has  been  in  actual  and  exclusive  use  as  a  trade  mark  of  the  ap- 
plicant,' or  his  predecessors  from  whom  he  derived  title,  for  ten 
years  next  preceding  the  passage  of  the  Act  of  February  20, 
1905. 

What  May  Be  Registered. 

Section  5  specifies  that  no  mark  by  which  the  goods  of  the 
owner  of  the  mark  may  be  distinguished  from  other  goods  of 
the  same  class  shall  be  refused  registration  as  a  trade  mark  on 
account  of  the  nature  of  such  mark  unless  the  mark  is  of  a 
certain  specified  character. 

The  first  exception  is  that  a  mark  which  comprises  immoral 
or  scandalous  matter,  the  flag,  coat  of  arms,  or  other  public 
insignia  of  the  United  States,  any  state,  municipality  or  foreign 
country,  or  the  emblem  of  any  fraternal  society  is  not  registrable 
even  under  the  ten  year  proviso.  (In  re  Calm,  Belt  &  Co.,  122 
O.  G.,  354.) 

On  the  ground  of  public  policy  it  has  been  ruled  that  neither 
the  name  nor  picture  of  a  deceased  President  of  the  United 
States  is  registrable  (Ex  parte  Banner  Cigar  Mfg.  Co.,  138  O. 
G.,  528.)  The  names  and  pictures  of  deceased  rulers  of  other 
countries  are,  however,  registrable  under  the  present  practice. 

Marks  which  are  identical  with  a  registered  or  known  mark 
owned  and  in  use  by  another  and  appropriated  to  goods  of  the 
same  descriptive  properties,  or  which  so  nearly  resemble  a  regis- 
tered or  known  mark,  and  appropriated  to  merchandise  of  the 
same  descriptive  properties  as  to  be  likely  to  cause  confusion  or 
mistake  in  the  mind  of  the  public  shall  not  be  registered. 

Some  of  the  leading  decisions  of  the  Court  of  Appeals  of  the 
District  of  Columbia  on  the  question  of  what  constitutes  such 
similarity  as  to  cause  confusion  are  Wayne  County  Preserving 
Company  v.  The  Burt  Olney  Canning  Company,  140  O.  G.,  1003 ; 
In  re  Indian  Portland  Cement  Company,  134  O.  G.,  518;  Peter 
Schoenhofen  Brewing  Company  v.  The  Maltine  Company,  134  O. 
G.,  1805,  and  In  re  S.  C.  Herbst  Importing  Company,  134  O.  G., 
1565.  In  the  Wayne  Co.  case  the  court  said  that  doubts  on  the 
question  of  similarity  between  the  mark  of  an  applicant  and  a 
registrant  must  be  resolved  in  favor  of  the  registrant. 

What  constitutes  goods  of  the  "same  descriptive  properties"  is 
an  important  question  which  has  not  been  satisfactorily  settled. 
Further  decisions  of  the  Court  of  Appeals  of  the  District  of 
Columbia  and  other  courts  on  this  question  must  be  awaited. 
In  the  case  of  Walter  Baker  &  Company,  Limited  v.  Harrison, 
138  O.  G.,  770,  in  holding  that  the  Commissioner  of  Patents 


UNITED  STATES  OF  AMERICA  527 

erred  in  sustaining  a  demurrer  to  an  opposition  to  registration 
of  a  mark  for  coffee  by  the  owner  of  a  similar  mark  used 
on  cocoa  the  Court  of  Appeals  of  the  District  of  Columbia  laid 
down  this  general  rule: 

"Things  may  be  said  to  possess  the  same  descriptive  properties 
when  they  can  be  applied  to  the  same  general  use.  Coffee  and 
cocoa,  when  used  as  beverages,  are  at  once  associated  as  belong- 
ing to  the  class  of  beverages  in  general  domestic  use.  They 
belong  to  the  class  of  beverages  universally  used  on  the  table 
and  sold  in  prepared  packages  for  that  purpose.  Should  the 
same  mark  be  granted  to  different  persons  for  use  on  coffee  and 
cocoa,  respectively,  the  natural  and  certain  reslalt  would  be,  that 
the  one  wishing  to  profit  by  the  use  of  the  same  mark  would 
adopt  the  style  of  package  used  by  the  other,  and,  by  such 
unauthorized  imitation,  cause  confusion  in  the  mind  of  the  pur- 
chasing consuming  public  as  to  the  quality  of  the  goods  so 
marked.  The  intent  of  the  statute  is  to  protect  the  rightful 
owners  of  trade  marks  in  their  valuable  property  rights,  and  it 
seems  to  tax  the  courts  to  the  utmost  to  protect  those  rights 
against  the  ingenuity  of  counsel  and  the  designs  of  sharp  com- 
petitors. A  mark  should  be  denied,  not  only  when  used  upon 
goods  of  the  same  descriptive  properties  as  a  similar  registered 
mark,  but  when  used  on  goods  belonging  to  the  same  general 
class." 

In  the  case  of  Phoenix  Paint  &  Varnish  Co.  vs.  John  T.  Lewis 
&  Bros  Co.,  139  O.  G.,  990,  where  the  question  was  whether 
ready  mixed  paints  and  paste  paints  are  goods  of  the  same 
descriptive  properties,  this  same  court  held  that  they  are,  and 
said: 

"We  think  two  trade  marks  may  be  said  to  be  appropriated  to 
merchandise  of  the  same  descriptive  properties  in  the  sense  meant 
by  the  statute  when  the  general  and  essential  characteristics  of 
the  goods  are  the  same.  To  rule  that  the  goods  must  be  identical 
would  defeat  the  purpose  of  the  statute  and  destroy  the  value  of 
trade  marks.  The  test  is  whether  there  is  such  a  sameness  in 
the  distinguishing  characteristics  of  the  goods  as  to  be  likely  to 
mislead  the  general  public.  If  there  is,  only  one  mark  should 
be  registered.  Congress  evidently  intended  to  prevent  the  second 
registration  of  a  mark  that  would  enable  an  unscrupulous  dealer 
to  obtain  the  benefit  of  a  valuable  trade  reputation  established  by 
conscientious  effort  and  fair  dealing  to  the  injury  of  the  public 
as  well  as  the  owner  of  the  mark." 

The  present  Commissioner  recently  overruled  the  holding  of  a 
former  Commissioner,  and  held  that  whisky  and  gin  are  goods 
of  the  same  descriptive  properties.  (P.  J.  Bowlin  Liquor  Co.  v. 
J.  &  J.  Eager  Co.,  148  O.  G.,  571.) 

Some  other  decisions  on  the  question  of  what  constitutes  goods 
of  the  same  descriptive  properties  are*  ^orence  Mfg.  Co.  v.  J. 


528  UNITED  STATES  OF  AMERICA 

C.  Dowel  &  Co.,  178  Fed.,  73 ;  E.v  parte  The  Ohio  Garment  Com- 
pany, 153  O.  G.,  821;  American  Tobacco  Co.  v.  Polacsek,  170 
Fed.,  117 ;  Ex  parte  Bindley  Hardware  Company,  141  O.  G.,  285 ; 
American  Stove  Co.  v.  Detroit  Stove  Works  and  Barstow  Stove 
Co.,  134  O.  G.,  2245,  and  Church  &  Dwight  Co.  v.  Russ  el  a!., 
99  Fed.,  276 ;  91  O.  G.,  228. 

A  mark  which  consists  merely  in  the  name  of  an  individual, 
firm,  corporation  or  association  is  not  registrable  unless  written, 
printed,  impressed  or  woven  in  some  particular  or  distinctive 
manner  or  in  association  with  the  portrait  of  the  individual,  pro- 
vided, however,  that  a  trade  mark  otherwise  registrable  shall  not 
be  refused  registration  because  of  its  being  the  name  of  an 
applicant  or  a  portion  thereof.  This  last  proviso,  which  became 
a  law  February  18,  1911,  was  passed  to  enable  a  firm,  corporation 
or  association  to  register  its  name  if  it  is  an  arbitrary  mark. 
The  decisions  in  the  cases  of  Kentucky  Distilleries  &  Warehouse 
Co.  v.  Old  Lexington  Club  Distilling  Co.,  135  O.  G.,  220,  and 
In  re  Success  Co.,  152  O.  G.,  958,  made  it  impossible  for  a  firm, 
corporation  or  association  to  register  all  or  a  substantial  part 
of  its  firm,  corporate  or  association  name  which  it  used  as  a 
trade  mark  if  not  distinctively  displayed,  although  any  individual 
or  other  firm,  corporation  or  association  could  register  such  mark 
if  it  was  not  substantially  its  name.  The  Success  Co.  could  not 
register  the  word  "Success,"  although  any  individual,  or  other 
firm,  corporation  or  association  the  name  of  which  did  not  include 
the  word  "Success"  as  a  substantial  part  of  its  name  could  regis- 
ter this  word.  Now  an  arbitrary  mark  is  registrable  notwith- 
standing it  is  the  name  or  part  of  the  name  of  the  applicant. 

A  facsimile  signature  is  held  to  be  a  distinctive  display  of  a 
surname,  and  registrable.  (Ex  parte  Mark  Cross  Co.,  102  O. 
G.,  622.) 

Writing  a  surname  in  script  type  with  a  paraph  beneath  it  has 
been  repeatedly  held  not  to  be  a  particular  or  distinctive  manner 
of  display.  In  Ex  parte  The  Amulet  Chemical  Company,  146 
O.  G.,  719,  the  Commissioner  said  that  the  distinctiveness  must 
be  in  the  name  itself ;  that  it  was  not  sufficient  to  print  the  name 
in  connection  with  heraldic  devices  or  other  arbitrary  matter. 
What  constitutes  a  distinctive  display  of  a  surname  is  further 
considered  in  the  cases  of  Ex  parte  Englehard  &  Sons  Co.,  109 
O.  G.,  1886 ;  Ex  parte  Pittsburgh  Valve  Foundry  and  Construc- 
tion Co.,  128  O.  G.,  887;  Ex  parte  C.  H.  Alden.  131  O.  G.,  2419 ; 
Ex  parte  F.  Mayer  Boot  &  Shoe  Co.,  151  O.  G.,  1014;  Ex  parte 
Polar  Knitting  Mills,  154  O.  G.,  251,  and  In  re  Artesian  Manu- 
facturing Company,  166  O.  G.,  988. 

A  word  merely  descriptive  of  the  goods  with  which  it  is  used, 
or  of  a  characteristic  or  quality  of  such  goods,  is  not  registrable ; 
neither  is  a  word  which  is  merely  a  misspelling  of  a  descriptive 
word.  It  should  be  noted  that  it  is  not  necessary  for  a  word  to 


UNITED  STATES  OF  AMERICA  529 

be  directly  descriptive  in  order  to  come  within  the  prohibition  of 
the  statute.  The  word  "Self-Loading"  as  applied  to  cartridges 
was  held  both  by  the  Commissioner  of  Patents  and  the  Court  of 
Appeals  of  the  District  of  Columbia  as  descriptive,  indicating 
that  the  cartridges  were  to  be  used  in  a  certain  type  of  gun,  that 
is,  in  a  gun  commonly  known  as  a  "self-loading  gun."  Winchester 
Repeating  Arms  Co.  v.  Peters  Cartridge  Co.,  30  App.  D.  C,  505 ; 
134  O.  G.,  2030. 

It  was  urged  in  the  case  of  In  re  Anti-Cori-Zine  Chemical 
Company,  151  O.  G.,  452,  that  the  words  "Get  Well"  as  applied 
to  a  medicine  were  registrable,  as  they  described  no  quality  of 
the  medicine;  that  it  was  absurd  to  say  that  a  medicine  could 
"get  well."  and  that  if  the  words  as  used  indicated  anything  they 
merely  indicated  an  effect  to  be  produced  by  the  medicine.  The 
court,  however,  said  that  these  words  were  a  direct  claim  that 
the  medicine  had  the  property  of  causing  the  person  who  took 
it  to  recover  from  disease,  to  "get  well,"  and  were  not  registrable. 

In  the  case  of  In  re  Central  Consumers'  Company,  140  O.  G., 
1211,  the  court  laid  down  what  is  regarded  by  some  lawyers  as 
a  strict  rule  for  determining  whether  a  mark  is  descriptive ;  the 
rule  is : 

"It  was  evidently  the  intention  of  Congress  in  placing  these 
restrictions  in  the  Trade  Mark  Act  to  prohibit  any  one  from 
acquiring  a  property-right,  protected  by  law  in  its  exclusive  use, 
in  a  name  possessing  any  inherent  signification  that  would,  of 
itself,  enhance  the  sale  or  value  of  the  article  or  articles  to  which 
it  may  be  applied.  In  other  words,  it  was  intended  to  limit  the 
selection  to  mere  arbitrary  words  or  designs,  the  value  of  which 
should  consist  alone  in  their  becoming  fixed  in  the  public  mind 
through  continued  use  on  the  goods  of  the  owner.  It  was  not 
intended  that  the  mark  should  lend  value  to  the  goods,  but  that 
the  quality  of  the  goods  and  the  reputation  of  the  owner  should 
ultimately  make  the  mark  valuable  as  a  symbol  in  the  connection 
in  which  it  may  be  used." 

The  statute  prohibits  the  registration  of  "merely  a  geopraphical 
name  or  term."  That  such  mark  is  not  a  valid  trade  mark  was 
held  by  the  United  States  Supreme  Court  in  the  case  of  Canal 
Co.  v." Clark,  80  U.  S.,  311,  and  Columbia  Mill  Co.  v.  Alcorn, 
150  U.  S.,  460. 

The  main  difficulty  relative  to  this  provision  is  to  determine 
whether  a  word  which  is  a  geographical  term  and  which  also 
has  some  other  well  known  meaning  is  primarily  geographical, 
or  is  arbitrary.  The  fanciful  meaning  of  such  words  as  Aurora, 
Delta,  Defiance  and  Selma  has  been  held  to  predominate  in  the 
cases  of  £.r  parte  Little  &  Co.,  85  O.  G.,  1221 ;  E.v  parte  Man- 
ogue-Pidgeon  Iron  Co.,  07  O.  G.,  2084 ;  £.r  parte  Byron  Weston 
Co.,  99  O.  G.,  861,  and  Ex  parte  Huenfeld.  98  O.  G..  1908. 
respectively,  and  these  words  have  been  registered  as  technical 

34 


53°  UNITED  STATES  OF  AMERICA 

trade  marks.  Oriental,  Manhattan,  Tabasco,  Cadillac,  Union, 
Columbia  and  the  outline  map  of  the  United  States  have  been 
held  not  valid  trade  marks  in  the  .cases  of  In  re  Hopkins,  128  O. 
G,,  890;  Ex  parte  The  Davis  Sewing  Machine  Co.,  112  O.  G., 
1752;  Mcllhenny's  Son  v.  The  New  Iberia  Extract  of  Tabasco 
Pepper  Co.,  Ltd.,  153  O.  G.,  547 ;  Ex  parte  Wolverine  Mfg.  Co., 
152  O.  G.,  487;  United  States  Tobacco  Co.  v.  McGreenery,  144 
F.,  531 ;  Columbia  Mill  Co.  v.  Alcorn,  supra,  and  Ex  parte 
American  Sugar  Refining  Co.,  144  O.  G.,  562,  respectively.  The 
rules  given  in  the  cases  above  cited  bearing  on  the  question  of 
geographical  names  must  be  considered  if  the  question  is  close  to 
determine  whether  the  particular  word  falls  on  the  geographical 
or  the  arbitrary  side  of  the  line.  It  may,  however,  be  safe  to 
say  that  as  a  general  rule  if  a  word  has  a  well  known  geographical 
meaning  its  arbitrary  meaning  must  be  clearly  established  by  the 
applicant.  Ex  parte  American  Saw  Co.,  58  O.  G.,  521. 

A  portrait  is  registrable  with  the  written  consent  of  the  person 
whose  portrait  is  used  as  a  trade  mark,  and,  even  if  the  entire 
mark  is  not  described  in  the  statement,  it  is  necessary  to  state 
whose  picture  constitutes  a  part  of  the  mark.  This  is  now  always 
required.  An  accepted  description  following  the  words  "accom- 
panying drawing"  in  the  first  paragraph  of  the  statement  is  "the 
portrait  shown  being  that  of  (here  give  name)"  and  if  the 
person  whose  portrait  is  used  is  deceased,  follow  the  name  by 
the  word  "deceased."  If  the  picture  is  fanciful,  the  words  "the 
picture  being  fanciful"  should  follow  the  words  "accompanying 
drawing."  The  nom  de  plume  or  fancy  name  of  an  individual 
is  refused  registration  unless  the  consent  of  the  individual  is 
filed. 

Requirements. 

An  application  for  the  registration  of  a  trade  mark  must  be 
made  to  the  Commissioner  of  Patents  and  must  be  signed  by  the 
applicant. 

A  complete  application  comprises: 

(1)  A  petition,  requesting  registration,  signed  by  the  appli- 
cant. 

(2)  A  statement  specifying  the  name,  domicile,  location,  and 
citizenship  of  the  party  applying,  and  if  the  applicant  be  a  cor- 
poration or  association,  the  State  or  nation  under  the  laws  of 
which   organized;   the  class  of  merchandise    (according  to  the 
official   classification),  and  the  particular  description  of  goods 
comprised  in  such  class  upon  which  the  trade  mark  has  actually 
been  used ;  a  statement  of  the  mode  in  which  the  same  is  applied 
and  affixed  to  the  goods,  and  the  length  of  time  during  which 
the   trade  mark  has  been  used  upon   the   goods   specified.      A 
description  of  the  trade  mark  itself  shall  be  included,  if  desired 


UNITED  STATES  OF  AMERICA  531 

by  the  applicant  or  required  by  the  Commissioner,  provided  such 
description  is  of  a  character  to  meet  the  approval  of  the  Com- 
missioner. 

(3)  A  declaration  complying  with  Section  2  of  Act  of  Feb- 
ruary 20,  1905,  as  amended  by  the  Act  of  February  18,  1909. 

(4)  A  drawing  of  the  trade  mark,  signed  by  the  applicant, 
or  his  attorney,  which  shall  be  a  facsimile  of  the  same  as  actually 
used  upon  the  goods. 

(5)  Five  specimens  (or  facsimiles,  when,  from  the  mode  of 
applying  or  affixing  the  trade  mark  to  the  goods,  specimens  can 
not  be  furnished)  of  the  trade  mark  as  actually  used  upon  the 
goods. 

(6)  A  fee  of  ten  dollars. 

The  petition,  the  statement  and  the  declaration  must  be  in  the 
English  language  and  written  on  one  side  of  the  paper  only. 

An  application  for  registration  of  a  trade  mark,  filed  in  this 
country  by  any  person  who  has  previously  regularly  filed  in  any 
foreign  country  which,  by  treaty,  convention,  or  law,  affords 
similar  privileges  to  the  citizens  of  the  United  States  an  applica- 
tion for  registration  of  the  same  trade  mark,  shall  be  accorded 
the  same  force  and  effect  as  would  be  accorded  to  the  same 
application  if  filed  in  this  country  on  the  date  on  which  applica- 
tion for  registration  of  the  same  trade  mark  was  first  filed  in 
such  foreign  country ;  Provided,  That  such  application  be  filed 
in  this  country  within  four  months  from  the  date  on  which  the 
application  was  first  filed  in  such  foreign  country. 

A  certificate  of  registration  shall  not  be  issued  to  an  applicant 
located  in  a  foreign  country  for  any  trade  mark,  for  registration 
of  which  he  has  filed  an  application  in  such  foreign  country, 
until  such  mark  has  been  actually  registered  by  him  in  the  country 
in  which  he  is  located. 

The  Application. 

A  complete  application  consists  of  a  petition,  a  statement,  a 
declaration,  a  drawing,  and  five  specimens  of  the  trade  mark. 
Thi's  application  must  be  in  writing;  must  be  addressed  to  the 
Commissioner  of  Patents,  and  must  be  filed  in  the  Patent  Office. 
Complete  forms  showing  the  manner  of  preparing  an  application 
for  an  individual,  a  firm,  corporation  or  association  will  be  fur- 
nished by  B.  Singer's  offices.  An  applicant  may  prosecute  his  own 
application,  but  the  office  advises  an  applicant,  unless  he  is  familiar 
with  such  matters,  to  employ  a  competent  attorney.  An  attorney 
must  file  a  separate  power  to  act  in  each  anolication ;  a  general 
power  is  not  sufficient  and  will  not  be  accepted. 

The  power  of  attorney,  and  the  appointment  of  a  representative 
as  required  by  Section  3  of  the  Act,  may  be  included  in  the 
petition.  All  application  papers  except  the  drawing  must  be 
signed  by  the  applicant  and  not  by  the  attorney  of  record;  the 


532  UNITED  STATES  OF  AMERICA 

drawing  may  be  signed  by  the  attorney.     The  rules  require  that 
the  application  must  be  made  in  the  English  language. 

Name,  Domicile,  Location  and  Citizenship. 

The  applicant's  name,  domicile,  location  and  citizenship  are 
required  to  be  given.  The  Commissioner  of  Patents  has  ruled 
that  the  name  of  the  applicant  must  be  uniform  throughout  the 
papers.  Ex  parte  Boston  Fountain  Pen  Co.,  116  O.  G.,  2531. 
The  failure  to  give  applicant's  correct  name  wherever  it  appears 
in  an  application  probably  causes  as  many  formal  objections  to 
applications  to  be  made  by  the  Patent  Office  as  any  other  defect. 
If  the  applicant  is  an  individual,  and  the  form  suggested  is  fol- 
lowed, it  is  necessary  that  the  name  of  the  applicant  appear  in 
only  five  places ; — namely,  the  signature  to  the  petition,  statement, 
and  declaration,  in  the  preamble  to  the  statement,  and  in  the  body 
of  the  declaration.  If  the  applicant  is  a  firm,  corporation  or 
association,  the  name  of  the  applicant  need  not  appear  in  the 
declaration.  After  the  application  is  prepared,  it  would  save 
much  time  and  expense  if  it  were  compared  to  see  that  the  name 
is  absolutely  uniform.  It  is  not  sufficient  that  the  name  appears 
one  place  as  Co.,  and  another  as  Company ;  or  as  Ltd.,  in  one 
part  of  the  application,  and  as  Limited  in  another ;  as  Soc.  and 
Society.  It  must  appear  throughout  as  Company  or  Co. ;  not 
both  Co.  or  Company,  etc.  If  the  article  "The"  is  a  part  of  the 
name  of  a  corporation  applicant,  it  should  always  be  used.  The 
draftsman  will  often  enter  the  name  of  the  applicant  on  the 
drawing  according  to  his  idea  of  what  it  should  be.  He  should, 
however,  be  guided  by  the  name  as  signed  to  the  statement. 

-  Honorable  titles  are  regarded  as  forming  no  part  of  an  appli- 
cant's name,  and  should  be  omitted.  The  title,  Dr.,  which  is  used 
in  many  declarations  filed  by  applicants  located  in  Germany, 
should  be  omitted.  (In  re  Charles,  Prince  de  Loewenstein,  108 
O.  G.,  562.) 

The  statute  specifies -that  both  the  "domicile"  and  "location" 
shall  be  given.  The  forms  prepared  by  the  Patent  Office  suggest 
that  an  individual  specify  his  residence  and  his  place  of  doing 
business ;  a  firm,  their  domicile  and  place  of  doing  business,  and 
a  corporation  or  association,  its  location  and  place  of  doing  busi- 
ness. What  is  important  to  notice  is  that  it  is  not  sufficient  to 
give  the  place  of  doing  business  only :  the  residence,  domicile  or 
location,  as  the  case  may  be.  must  also  be  specified.  The  place 
of  doing  business,  and  the  residence,  domicile  or  location  will 
often  be  the  same,  but  this  fact  does  not  avoid  the  necessity  of 
particularly  mentioning  both.  The  residence,  domicile  or  location 
may  be  given  generally,  while  the  place  of  doing  business  should 
be  definitely  stated.  For  instance,  an  individual  may  state  that 
he  resides  at  Vienna,  Austria,  but  should  state  that  his  place 


UNITED  STATES  OF  AMERICA  533 

of  business  is  a  certain  street  and  number  in  said  city  when  such 
is  the  case. 

An  individual  should  specify  of  what  nation  he  is  a  citizen, 
or  of  what  ruler  he  is  a  subject.  The  citizenship  of  a  firm  suf- 
ficiently appears  if  the  domicile  is  specified,  although  the  forms 
indicate  that  the  names  of  the  individual  composing  a  firm  should 
be  given,  and  their  citizenship  specified.  There  appears  to  be  no 
good  reason  why  the  names  of  the  persons  composing  the  firm, 
and  their  citizenship,  should  not  be  given.  To  do  this  will  avoid 
the  request  almost  sure  to  be  made,,  that  they  be  specified.  If, 
however,  a  firm  does  not  desire  to  specify  the  names  of  the 
persons  composing  it  and  their  citizenship,  it  may  refuse  upon 
good  authority.  (Smith  v.  Reynolds  &  Jacobs,  3  O.  G.,  214.) 

Description  of  the  Mark. 

The  Act  as  now  amended  by  the  Act  of  February  18,  1909, 
provides  that  "a  description  of  the  mark  itself  shall  be  included, 
if  desired  by  the  applicant  or  required  by  the  Commissioner,  pro- 
vided such  description  is  of  a  character  to  meet  the  approval  of 
the  Commissioner." 

It  is  the  practice  of  the  office  since  this  amendment  was  passed 
to  require  a  description  of  the  mark  if  it  contains  what  appears 
to  be  a  facsimile  signature,  or  if  there  is  any  doubt  as  to  the 
character  of  the  mark.  Of  course,  an  applicant  may  describe 
his  mark  if  he  desires,  this  description  meeting  the  approval  in 
the  first  instance  of  the  Examiner  of  Trade  Marks  and  the  Com- 
missioner on  appeal,  if  the  applicant  and  the  Examiner  cannot 
agree.  The  office  will  now  insist  that  if  any  of  the  mark  is 
described  all  shall  be  described.  This,  however,  does  not  apply 
if  the  description  is  merely  the  identification  of  a  picture,  a  state- 
ment in  regard  to  a  facsimile  signature,  or  an  explanation  of  a 
conventional  lining  to  show  color.  This  description  should  follow 
the  words  "accompanying  drawing"  in  the  first  paragraph  of  the 
statement.  It  is  the  practice  to  require  a  description  of  color  if 
the  drawing  is  lined  for  color  according  to  the  conventional 
lining  given  in  the  Patent  Rules.  If  the  drawing  is  lined,  the 
color  must  be  described.  E.v  parte  M.  Zimmerman  Co.,  127  O. 
G.,  1991.  If  it  is  not  desired  to  claim  color,  the  drawing  should 
not  show  the  conventional  lining.  Color  may  be  claimed  without 
lining  the  drawing  to  show  color.  For  instance,  if  the  mark  is 
a  red  star,  the  following  may  appear  after  the  words  "accom- 
panying drawing,"  "consisting  of  a  star  printed  in  red."  If  the 
mark  is  a  portrait  of  a  living  individual  or  consists  in  part  of 
such  a  portrait,  the  written  consent  of  such  individual  to  the  use 
and  registration  of  his  portrait  as  a  trade  mark  must  be  filed, 
and  the  portrait  should  be  described  after  the  words  "accom- 
panying drawing"  as  follows:  "consisting  of  the  portrait  of,"  or 


534  UNITED  STATES  OF  AMERICA 

"the  portrait  being  that  of  (here  give  name)."  If  the  individual 
is  deceased  the  description  should  be  "the  portrait  being  that  of 
(here  give  name),  deceased."  If  the  picture  is  fanciful,  the 
description  should  be :  "the  picture  being  fanciful." 

How  the  mark  is  applied  or  affixed  to  the  goods  is  usually 
described  in  the  last  paragraph  of  the  statement.  All  the  dif- 
ferent methods  of  using  the  mark  may  be  enumerated,  but  one 
of  the  ways  specified  must  be  the  manner  of  use  shown  by  the 
specimens.  In  other  words,  the  allegation  of  use  must  corre- 
spond with  the  proof.  No  reference  should  be  made  to  the  use 
of  the  mark  on  letter  heads,  circulars  or  advertising  matter. 
The  Act  particularly  specifies  that  a  trade  mark  may  be  deemed 
to  be  affixed  to  the  article  when  it  is  placed  in  any  manner  in 
or  upon  the  article  itself  or  the  package  or  receptacle  or  upon  the 
envelope  or  other  thing  in,  by  or  with  which  the  goods  are 
packed,  enclosed  or  prepared  for  sale.  (Section  29.)  In  the  case 
of  Hay  v.  Todd  Mfg.  Co.  v.  Querns  Bros.,  86  O.  G.,  1323,  the 
Commissioner  ruled  that  a  mark  was  affixed  or  attached  to  the 
goods  if  it  was  so  associated  with  the  goods  as  to  distinguish 
them  by  the  particular  mark  used. 

Hoiv  Long  Used. 

If  the  mark  has  been  recently  adopted  it  is  best  to  give  the 
day  of  the  month,  or  at  least  the  month,  and  year  when  use 
was  first  begun.  If  the  date  when  use  of  the  mark  was  first 
begun  is  not  given  in  the  application  as  originally  filed,  it  will  be 
necessary  to  file  a  new  declaration  with  the  amendment  specifying 
the  date  of  use,  or,  if  an  earlier  date  of  use  is  claimed  than  was 
originally  claimed,  a  new  declaration  is  likewise  required.  If 
the  application  is  under  the  ten  year  proviso  and  use  was  begun 
in  1895  it  is  necessary  to  be  specified  as  to  the  date  in  order  to 
assure  the  office  that  use  was  begun  prior  to  February  20th  of 
that  year. 

The  forms  of  application  approved  by  the  Commissioner  indi- 
cate that  the  applicant's  predecessors  should  be  given,  but  it  is 
not  necessary  to  do  this.  If  the  applicant's  predecessor  is  a 
registrant,  however,  it  would  appear  best  to  give  the  name  of 
the  predecessor  to  prevent  the  registered  mark  from  being  cited 
against  his  application. 

Drawing. 

The  kind  of  drawing  that  must  be  furnished  is  clearly  indicated 
by  Rule  36  of  the  Rules  for  the  Registration  of  Trade  Marks. 
It  should  be  made  on  white  bristol  board  of  sufficient  thickness 
to  prevent  it  from  bending  or  breaking  easily ;  the  size  must  be 
10  by  15  inches ;  one  inch  from  the  edges  must  "be  a  marginal 
line;  all  work  and  signatures  must  be  within  this  line,  not  even 


UNITED  STATES  OF  AMERICA  535 

a  letter  of  the  signature  of  the  applicant  or  his  attorney  must  be 
outside  of  this  line;  a  blank  space  not  less  than  one  and  one- 
fourth  inches,  measuring  downwardly  from  the  top  marginal  line, 
must  be  left  for  a  heading;  India  ink  must  be  used  and  all 
lines  must  be  clear,  sharp  and  solid,  and  made  with  the  pen  only ; 
pale  or  rough  lines  will  usually  cause  a  drawing  to  be  rejected. 
The  name  of  the  owner  of  the  trade  mark  signed  by  himself  or 
his  attorney  must  be  placed  at  the  lower  right  hand  corner,  and 
it  is  here  again  insisted  that  the  name  of  the  applicant  as  signed 
to  the  drawing  is  the  only  one  of  the  original  papers  which  may 
be  signed  by  the  attorney  of  record.  Witnesses  to  the  signature 
of  a  drawing  are  not  required. 

The  mark  shown  in  the  drawing  must  agree  exactly  with  the 
specimen  or  with  the  mark  shown  in  the  copy  of  the  foreign 
certificate.  Ex  parte  Hoyt  Bros.  &  Co.,  124  O.  G.,  1523. 

If  a  drawing  is  lined  to  show  the  mark  in  color  the  conven- 
tional lining  given  opposite  page  88  of  the  Patent  Rules  must 
be  followed. 

Section  16  of  the  Trade  Mark  Act  provides  that  registration 
under  this  Act  shall  be  prima  facie  evidence  of  ownership,  and 
the  Court  of  Appeals  of  the  District  of  Columbia  held,  in  the 
case  of  Johnson  v.  Brandean,  139  O.  G.,  732,  that  a  registrant 
has  a  prima  facie  right  to  everything  which  appears  upon  the 
drawing.  Section  5  prohibits  the  registration  of  anything  but 
arbitrary  matter  except  under  the  ten  year  proviso.  Now,  the 
practical  difficulty  is  that  many  foreign  countries  permit  the 
registration  of  the  whole  label,  and  the  certified  copy  of  the 
foreign  certificate  often  shows  matter  registered  that  is  not 
arbitrary.  In  the  case  of  Ex  parte  Pietro,  127  O.  G.,  2394,  the 
Commissioner  held  that  the  only  mark  which  a  foreign  applicant 
is  entitled  to  register  in  this  country  is  the  mark  which  he  has 
registered  in  the  country  in  which  he  is  located.  This  ruling 
was,  however,  modified  by  the  decision  in  the  case  of  Ex  parte 
Soc.  *  Prod.  tl  Chim.  co  Farmac.  ci  A.  Bertelli,  &c.,  144  O.  G., 
817,  so  that  now  a  foreign  applicant  must  show  in  his  drawing 
all  the  arbitrary  features  of  the  mark  as  registered  abroad  and 
must  omit  or  disclaim  all  that  are  not  arbitrary.  This,  of  course, 
refers  to  the  registration  of  a  technical  mark  and  not  to  an 
application  for  registration  under  the  ten  year  proviso.  What 
are  and  what  are  not  arbitrary  features  must  be  determined  by 
the  provisions  of  Section  5  and  the  ruling  in  many  cases  inter- 
preting that  section. 

Specimens. 

Under  the  authority  of  the  statute  to  require  specimens,  the 
Commissioner  has  by  Rule  22  required  the  filing  of  five  specimens 
of  the  trade  mark  as  actually  used  upon  the  goods  or  the  same 
number  of  facsimiles,  when  from  the  mode  of  applying  or 


536  UNITED  STATES  OF  AMERICA 

affixing  the  mark  to  the  goods  specimens  cannot  be  furnished. 
A  great  deal  of  trouble  would  be  saved  applicants  and  the  office 
if  applicants  would  keep  in  mind  that  the  statute  specifically 
states  that  specimens  "as  actually  used"  must  be  presented. 
Mutilated  or  cut  out  specimens  will  always  be  objected  to  and 
should  not  be  filed.  Proof  copies  of  labels  are  probably  never 
used  on  merchandise,  and  should  not  be  filed  as  specimens.  It 
is  not  to  be  expected  the  office  will  pass  such  alleged  labels.  If 
a  stencil  is  used,  impressions  from  the  stencil  on  plain  pieces  of 
paper  will  be  accepted  as  satisfactory.  Perhaps  the  most  satis- 
factory facsimiles,  which,  according  to  the  rule,  are  accepted 
when  it  is  not  practicable  to  furnish  specimens,  are  photographs 
of  all  or  a  part  of  the  article  with  the  trade  mark  plainly  appear- 
ing thereon.  This  is  a  good  way  to  show  the  use  of  a  mark 
cast  into  a  machine. 

Declaration. 

The  regular  form  of  declaration  should  be  filed ;  no  changes 
or  variations  should  be  attempted.  If  the  regular  form  is  not 
followed  the  applicant  should  be  careful  that  the  requirements 
of  Section  2  of  the  Act  and  Rules  31,  32,  33  and  34  are  all  com- 
plied with.  It  should  be  kept  in  mind  that  this  declaration  must 
be  made  by  the  applicant,  if  the  applicant  is  an  individual,  by  a 
member  of  the  firm,  if  a  firm  is  the  applicant,  or  by  an  officer 
of  a  corporation  or  an  association  if  such  a  body  is  the  owner  of 
the  mark.  If  a  corporation  or  an  association  is  the  applicant, 
the  statute  is  not  satisfied  if  the  declaration  is  made  by  a  clerk 
or  manager  or  some  similar  employee.  The  declaration  should 
be  signed  by  an  individual  who  is  recognized  as  an  officer  by  the 
charter,  or  the  law  under  which  the  body  was  organized. 

The  provision  of  Section  2  which  relates  particularly  to 
foreign  applicants  is  as  follows : 

"If  the  applicant  resides  or  is  located  in  a  foreign  country, 
the  statement  required  shall,  in  addition  to  the  foregoing,  set 
forth  that  the  trade  mark  has  been  registered  by  the  applicant,, 
or  that  an  application  for  the  registration  thereof  has  been  filed 
by  him  in  the  foreign  country  in  which  he  resides  or  is  located, 
and  shall  give  the  date  of  such  registration,  or  the  application 
therefor,  as  the  case  may  be,  except  that  in  the  application  in 
such  case  it  shall  not  be  necessary  to  state  that  the  mark  has 
been  used  in  commerce  with  the  United  States  or  among  the 
states  thereof.  The  verification  required  by  this  section  may  be 
made  before  any  person  within  the  United  States  authorized  by 
law  to  administer  oaths,  or,  when  the  applicant  resides  in  a 
foreign  country,  before  any  minister,  charge  d'affaires,  consul, 
or  commercial  agent  holding  commission  under  the  Government 
of  the  United  States,  or  before  any  notary  public,  judge,  or 
magistrate  having  an  official  seal  and  authorized  to  administer 


UNITED  STATES  OF  AMERICA  537 

oaths  in  the  foreign  country  in  which  the  applicant  may  be 
whose  authority  shall  be  proved  by  a  certificate  of  a  diplomatic 
or  consular  officer  of  the  United  States." 

It  is  first  to  be  noted  that  the  word  "statement"  as  here  used 
is  not  synonymous  with  the  word  "statement"  as  used  by  the 
Patent  Office  to  distinguish  that  part  of  the  application  which 
gives  the  name,  location,  domicile,  citizenship,  etc.,  of  the  appli- 
cant. As  here  used  it  means  the  declaration.  (Ex  parte  Konig- 
liches  Hofbrauamt,  Miinchen,  146  O.  G.,  720.) 

It  is  to  be  noted  that  if  the  mark  has  been  registered  in 
the  foreign  country  in  which  the  applicant  resides  or  is  located, 
the  fact  of  registration  and  the  date  thereof  should  be  set  forth, 
and  it  is  the  established  practice  to  give  the  number  of  the 
foreign  certificate  of  registration.  If  the  mark  has  not  been 
registered,  the  fact  that  application  for  registration  has  been 
made  should  be  stated  with  the  date  of  the  application.  If  the 
mark  has  been  registered,  no  reference  need  be  made  to  the  -date 
of  application  for  registration.  Care  should  be  given  not  to  give 
the  date  of  application  as  the  date  of  registration  or  vice  versa. 
In  the  case  of  Ex  parte  Felten  &  Guilleaume-Lahmeyerwerke 
Actien-Gesellschaft,  150  O.  G.,  569,  a  new  declaration  was  re- 
quired, the  applicant  having  stated  in  its  declaration  that  the 
mark  had  been  registered  on  a  certain  date,  which  was,  in  fact, 
the  date  on  which  application  for  registration  had  been  filed. 

The  Act  clearly  sets  forth  before  whom  the  verification  may 
be  made,  and  requires  the  authority  of  the  person  before  whom 
made  to  be  proved  by  the  certificate  of  a  diplomatic  or  consular 
officer  of  the  United  States  in  case  it  is  not  made  before  such 
officer. 

Representative. 

Section  3  provides  for  the  designation  in  writing  of  some 
person  residing  in  the  United  States  upon  whom  notice  of  pro- 
ceedings affecting  the  right  to  the  trade  mark  may  be  served. 
Service  upon  this  representative  is  made  by  the  Act  as  effective 
as  service  upon  the  registrant.  It  is  important  for  a  registrant 
to  notify  the  Commissioner  of  Patents  if  any  change  is  made 
in  the  representative  or  his  address,  for  leaving  a  copy  of  a 
valid  notice  at  the  last  address  of  the  representative  of  which 
the  Commissioner  of  Patents  has  been  notified  is  sufficient  to 
serve  notice  upon  the  registrant.  The  appointment  is  usually 
made  as  a  part  of  the  petition,  although  this  may  be  done  by  a 
separate  instrument.  A  general  power  of  attorney  to  act  is  not 
a  sufficient  compliance  with  the  requirements  of  Section  3 ;  there 
must  be  a  statement  that  a  certain  person  is  appointed  to  accept 
notice  of  proceedings  or  upon  whom  process  may  be  served  as 
required  by  this  section  of  the  Trade  Mark  Act.  In  the  case 
of  Ex  parte  Wertheimer  &  Cie,  132  O.  G.,  679,  it  was  ruled  by 


538  UNITED  STATES  OF  AMERICA 

the  Commissioner  that  the  power  to  appoint  a  representative 
may  not  be  delegated  to  an  attorney;  that  the  appointment  must 
be  made  by  the  applicant  for  registration. 

Examination. 

All  complete  applications  for  registration  are  considered,  in 
the  first  instance,  by  the  examiner  in  charge  of  trade  marks. 
Whenever,  on  examination  of  an  application,  registration  is  re- 
fused for  any  reason  whatever,  the  applicant  will  be  notified 
thereof.  The  reasons  for  such  refusal  will  be  stated,  and  such 
information  and  references  will  be  given  as  may  be  useful  in 
aiding  the  applicant  to  judge  of  the  propriety  of  further  pros- 
ecuting his  application. 

The  examination  of  an  application  and  the  action  thereon  will 
be  directed  throughout  to  the  merits,  but,  in  each  letter,  the 
examiner  shall  state  or  refer  to  all  his  objections. 

If,  on  examination  of  an  application  for  the  registration  of  a 
trade  mark,  it  shall  appear  that  the  applicant  is  entitled  to  have 
his  trade  mark  registered  under  the  provisions  of  the  law,  the 
mark  will  be  published  in  the  Official  Gazette  at  least  once.  Such 
publication  shall  be  at  least  thirty  days  prior  to  the  date  of 
registration. 

If  no  notice  of  opposition  be  filed  within  thirty  days  after 
such  publication  the  applicant  or  his  attorney  will  be  duly  noti- 
fied of  the  allowance  of  his  application,  and  a  certificate  of 
registration  will  be  issued  as  provided  in  Rule  58. 

The  weekly  issue  closes  on  Thursday,  and  the  certificates  of 
registration  of  that  issue  bear  date  as  of  the  fourth  Tuesday 
thereafter. 

Interference,  Opposition  and  Cancellation. 

Whenever  application  is  made  for  the  registration  of  a  trade 
mark  which  is  substantially  identical  with  a  trade  mark  appro- 
priated to  goods  of  the  same  descriptive  properties,  for  which  a 
certificate  of  registration  has  been  previously  issued  to  another, 
or  for  registration  of  which  another  had  previously  made  appli- 
cation, or  which  so  nearly  resembles  such  trade  mark,  or  a 
known  trade  mark  owned  and  used  by  another,  as,  in  the  opinion 
of  the  Commissioner,  to  be  likely  to  be  mistaken  therefor  by  the 
public,  an  interference  will  be  declared. 

The  practice  in  trade  mark  interferences  will  follow,  as  nearly 
as  practicable,  the  practice  in  interferences  between  applications 
for  patents. 

Before  the  declaration  of  interference,  all  preliminary  ques- 
tions must  have  been  settled  by  the  examiner  in  charge  of  trade 
marks,  and  the  trade  mark  which  is  to  form  the  subject-matter 
of  the  controversy  must  have  been  decided  to  be  registrable,  and 


539 

must  have  been  published  at  least  once  in  the  Official  Gazette 
of  the  Patent  Office. 

Whenever  two  or  more  applicants  are  found  to  be  claiming 
substantially  the  same  registrable  trade  mark,  and  the  applica- 
tion of  one  of  the  applicants  is  ready  for  publication,  the  ex- 
aminer in  charge  of  trade  marks  may  require  the  other  applicants 
to  put  their  applications  in  condition  for  publication  within  a 
time  specified,  in  order  that  an  interference  may  be  declared. 
If  any  party  fail  to  put  his  application  in  condition  for  publica- 
tion within  the  time  specified,  the  declaration  of  interference 
will  not  be  delayed,  but  after  final  judgment,  the  application  of 
such  party  will  be  held  for  revision  and  restriction,  subject  to 
interference  with  other  applications  or  registered  trade  marks. 
The  examiner  in  charge  of  interferences  may,  either  before 
or  in  his  final  decision  in  any  interference  or  opposition,  direct 
the  attention  of  the  Commissioner  to  any  matter  which  may  have 
come  to  his  notice,  which  cannot  be  acted  upon  by  him,  which  in 
his  opinion  precludes  a  proper  determination  of  questions  raised 
by  the  proceeding,  or  which  amounts  to  a  statutory  bar  to  regisr 
tration  of  the  mark  to  any  or  all  of  the  parties.  The  Commis- 
sioner may,  before  judgment,  suspend  the  interference  or  oppo- 
sition and  remand  the  same  to  the  examiner  in  charge  of  trade 
marks  for  his  consideration  of  the  matters  to  which  attention 
has  been  directed.  If  the  case  be  not  so  remanded,  the  examiner 
in  charge  of  trade  marks  will,  after  judgment,  consider  any 
matter  affecting  right  to  registration  which  may  have  been 
brought  to  his  attention,  unless  the  same  shall  have  been  pre- 
viously disposed  of  in  the  proceeding.  From  the  decision  of  the 
examiner  in  charge  of  trade  marks  appeals  may  be  taken  as  in 
other  cases. 

Motions  to  dissolve  an  interference  upon  the  ground  that  no 
interference  in  fact  exists,  or  that  there  has  been  such  irregu- 
larity in  declaring  the  same  as  will  preclude  a  proper  determina- 
tion of  the  question  of  the  right  of  registration,  or  which  deny 
the  registrability  of  an  applicant's  mark,  should  contain  a  full 
statement  of  the  grounds  relied  upon,  and  should,  if  possible,  be 
made  not  later  than  the  thirtieth  day  after  the  notices  of  the 
interference  have  been  mailed.  Such  motions  and  all  such 
motions  of  a  similar  character,  should  be  accompanied  by  a 
motion  to  transmit  the  same  to  the  examiner  in  charge  of  trade 
marks,  and  such  motion  to  transmit  will  be  noticed  for  hearing 
upon  a  day  certain  before  the  examiner  in  charge  of  inter- 
ferences. When  in  proper  form,  the  motion  presented  will,  with 
the  files  and  papers,  be  transmitted,  by  the  examiner  in  charge  of 
interferences,  for  determination,  to  the  examiner  in  charge  of  trade 
marks,  who  will  thereupon  fix  a  day  certain  when  said  motion 
will  be  heard  before  him  upon  the  merits,  and  give  notice 
thereof  to  all  the  parties.  If  a  stay  of  proceedings  be  desired, 


540  UNITED  STATES  OF  A.MKKU  \ 

a  motion  therefor  should  accompany  the  motion  for  transmis- 
sion. 

When  the  motion  has  been  decided  by  the  examiner  in  charge 
of  trade  marks,  the  files  and  papers,  with  his  decision,  will  be 
sent  at  once  to  the  docket  clerk. 

Motions  to  shift  the  burden  of  proof  should  be  made  before, 
and  will  be  determined  by,  the  examiner  in  charge  of  interfer- 
ences. No  appeal  from  the  decision  on  such  motion  will  be 
entertained,  but  the  matter  may  be  reviewed  on  appeal  from 
the  final  decision  upon  the  question  of  priority. 

The  decision  of  the  examiner  in  charge  of  trade  marks,  upon 
a  motion  for  dissolution,  will  be  binding  upon  the  examiner  in 
charge  of  interferences  unless  reversed  or  modified  on  appeal. 
Unless  appeal  be  taken  within  the  time  limited  for  appeal,  the 
examiner  in  charge  of  trade  marks  will  return  the  files  and 
papers  with  his  decision  to  the  examiner  in  charge  of  interfer- 
ences. 

Any  person  who  believes  he  would  be  damaged  by  the  registra- 
tion of  a  mark  may  oppose  the  same  by  filing  a  written  notice 
of  opposition,  stating  the  grounds  therefor,  within  thirty  days 
after  the  publication  of  the  mark  sought  to  be  registered,  which 
notice  of  opposition  shall  be  accompanied  by  the  fee  required  by 
law  and  shall  be  verified  by  the  person  filing  the  same  before 
one  of  the  officers  mentioned  in  Section  2  of  the  Act  of  February 
20,  1905.  An  opposition  may  be  filed  by  a  duly  authorized 
attorney,  but  such  opposition  shall  be  null  and  void  unless  duly 
verified  by  the  opposer,  within  a  reasonable  time  after  such 
filing.  A  duplicate  copy  of  the  notice  of  opposition  must  be 
filed,  either  with  the  notice  of  opposition  or  within  a  reasonable 
time  after  the  filing  of  the  same. 

Any  person  deeming  himself  to  be  injured  by  the  registration 
of  a  trade  mark  in  the  Patent  Office,  may,  at  any  time,  make 
application  to  the  Commissioner  to  cancel  the  registration 
thereof.  Such  application  shall  be  filed  in  duplicate,  shall  state 
the  grounds  for  cancellation,  and  shall  be  verified  by  the  person 
filing  the  same,  before  one  of  the  officers  mentioned  in  Section 
2  of  the  Act  of  February  20,  190r>. 

If  it  shall  appear,  after  a  hearing  before  the  examiner  of 
interferences,  that  the  registrant  was  not  entitled  to  the  use  of 
the  mark  at  the  date  of  his  application  for  registration  thereof, 
or  that  the  mark  is  not  used  by  the  registrant,  or  has  been 
abandoned,  and  the  examiner  in  charge  of  interferences  shall  so 
decide,  the  Commissioner  shall  cancel  the  registration  of  the 
mark,  unless  appeal  be  taken  within  the  limit  fixed. 

In  case  of  opposition,  and  of  applications  for  cancellation,  the 
examiner  in  charge  of  trade  marks  shall  forward  the  files  and 
papers  to  the  examiner  in  charge  of  interferences,  who  shall 
give  notice  thereof  to  the  applicant  or  registrant.  The  applicant 


UNITED  STATES  OF  AMERICA  541 

or  registrant  must  make  answer  at  such  time,  not  less  than 
thirty  days  from  the  date  of  the  notice,  as  shall  be  fixed  by  the 
examiner  in  charge  of  interferences. 

The  proceedings,  on  oppositions,  and  on  applications  for  can- 
cellation, shall  follow,  as  nearly  as  practicable,  the  practice,  in 
interferences  between  applications  for  patents. 

Opposition  Proceedings. 

A  notice  of  opposition  filed  within  thirty  days  after  publication 
of  the  mark  in  the  Official  Gazette,  signed  by  an  attorney  author- 
ized to  practice  before  the  Patent  Office  and,  subsequently  and 
within  a  reasonable  time,  verified  by  an  officer  of  the  opponent 
company  and  accompanied  by  a  power  of  attorney  simultane- 
ously executed,  giving  to  the  attorney  by  whom  the  opposition 
was  signed  power  to  file  an  opposition  to  the  application  in 
question  and  ratifying  the  act  of  the  attorney  in  so  doing,  is 
properly  filed.  The  notice  of  opposition  need  not  allege  the 
authority  of  the  attorney  to  act  in  such  a  case.  The  office  will 
assume  such  authority  on  the  part  of  any  attorney  admitted  to 
practice  there.  A  notice  of  opposition  thus  filed  is  not  demurr- 
able  because  it  fails  to  allege  the  authority  of  the  attorney  to 
file  it.  If  the  oponent  were  required  to  give  a  power  of  attorney 
to  oppose  the  particular  registration,  he  could  as  well  sign  the 
notice  of  opposition  himself.  To  require  such  a  power  would 
be  to  defeat  the  provisions  of  the  amendment  giving  the  attorney 
authority  to  do  so.  (Citing,  Wellcome  vs.  Baum,  135  O.  G., 
895). 

The  allegation  that  the  oponent  has  made  use  of  the  mark 
claimed  since  a  date  prior  to  the  applicant's  use  thereof,  is 
enough  to  show  damage  without  an  allegation  that  the  opponent 
was  the  first  to  adopt  and  use  the  mark.  (Citing,  Battle  Creek 
Sanitarium  Co.,  Ltd.  vs.  Fuller,  134  O.  G.,  1229;  Underwood 
Typewriter  Co.  vs.  A.  B.  Dick  Co.,  Trade  Mark  Reporter.  Vol. 
1,  p.  35.)  (Imperial  Brush  Factory  vs.  George  Borgfeldt  & 
Co.,  February  20,  1911.) 

An  importer  of  goods  under  a  foreign  trade  mark  has  a 
standing  to  oppose  the  registration  of  the  mark  by  another  since, 
if  the  application  for  registration  were  granted,  the  registrant 
might  file  the  mark  in  the  custom  house,  under  Sec.  27  of  the 
Trade  Mark  Law  and  prevent  the  importation  of  the  goods. 
This  fact  is  sufficient  to  give  the  importer  an  interest  in  the 
subject-matter  that  will  support  an  opposition.  It  is  enough 
that  the  notice  of  opposition  alleees  the  importation  of  brushes 
bought  from  the  Imperial  Brush  Factory  since  the  year  1891 
under  the  mark  in  question.  It  is  not  necessary  to  allege  that 
the  mark  is  the  property  of  the  Imperial  Brush  Factory  and  a 
demurrer  will  not  lie  for  the  absence  of  such  an  allegation. 

The  application  to  which  the  opposition  was  filed  in  this  case 


542  UNITED  STATES  OF  AMERICA 

was  the  same  as  that  opposed  in  the  case  last  above  cited. 
Taking  these  two  cases  together,  it  appears  that  not  only  the 
owner  of  a  trade  mark  sought  to  be  appropriated,  but  also  one 
who  imports  goods  under  that  mark  may  oppose  the  registration 
of  the  mark  in  the  Patent  Office -by  another.  (Arai  &  Briesen 
vs.  George  Borgfeldt  &  Co.,  Feb.  20,  1911.) 

A  demurrer  may  be  interposed  as  a  matter  of  right  to  an 
amended  notice  of  opposition  before  an  answer  or  plea  is  inter- 
posed, and  such  a  demurrer  should  be  considered  on  the  merits 
and  should  not  be  overruled  for  the  alleged  reason  that  all  the 
grounds  urged  might  and  should  have  been  urged  against  the 
original  notice  of  opposition  upon  the  demurrer  which  was  inter- 
posed to  such  notice  and  sustained.  (La  Grange  Mills  vs.  Dan- 
iels &  Pickering  Co.,  Feb.  10,  1911.) 

A  notice  of  opposition  once  filed  can  not  be  dismissed  without 
prejudice  on  motion  of  the  opponent  and  against  the  objection 
of  the  applicant,  but  must  proceed  to  judgment  and  the  matter 
be  finally  disposed  of.  Otherwise  should  it  be  necessary  to 
republish  the  mark,  a  new  notice  of  opposition  might  be  filed 
and  the  applicant  be  again  put  to  the  trouble  and  annoyance  of 
defending  his  right  to  the  mark.  (Cravennette  Co.  vs.  Rogers 
&  Thompson,  July  14,  1911.) 

A  formal  withdrawal  of  a  notice  of  opposition  accompanied 
by  a  formal  abandonment  of  his  application  by  the  applicant 
may  be  allowed  and  the  proceeding  thereby  terminated.  (Shef- 
field Cutlery  Co.  vs.  Sheffield  Car  Co.,  July  20,  1911.) 

Ground  for  Cancellation. 

An  application  to  cancel  the  trade  mark  "Autolene"  on  the 
ground  that  the  registrant  permits  the  use  of  the  mark  by  others 
in  fraud  upon  the  public  is  not  sustained  by  proof  that  the  mark 
is  used  by  a  subsidiary  distributing  company  of  the  registrant. 
(Crescent  Oil  Co.  vs.  Robinson,  June  15,  1911.) 

Procedure  by  Cross  Bill  in  the  Patent  Office. 

A  novel  question  of  procedure  in  the  Patent  Office  in  opposi- 
tion cases  was  brought  up  by  the  answer  of  an  applicant  to  a 
notice  of  opposition,  requesting  that  the  opponent's  mark  be 
cancelled.  The  application  was  that  of  the  United  Drug  Co. 
for  the  registration  of  the  word  "Rexall"  for  certain  pharma- 
ceutical preparations.  The  opposition  was  filed  by  the  Burton 
Medicine  Co.,  whose  trade  mark  "Rex  Oil"  was  registered  in 
the  Patent  Office.  This  latter  registration  the  applicant,  in  its 
answer,  desired  to  have  cancelled.  It  was  urged  in  behalf  of 
the  applicant  that  there  was  nothing  in  the  statute  necessitating 
the  consideration  of  questions  of  opposition  and  cancellation  in 
separate  proceedings,  and  that  they  might  as  well  be  dealt  with 


UNITED  STATES  OF  AMERICA 


543 


together,  following  the  practice  in  equity  in  analogous  cases. 
The  Commissioner  holds,  however,  that  the  question  of  cancella- 
tion is  a  distinct  issue  and  not  germane  to  the  subject-matter 
of  the  proceedings  in  opposition.  A  cross  bill  in  equity  cannot 
be  filed  unless  it  relates  to  the  main  subject-matter  of  the  origi- 
nal bill,  and  in  this  instance  the  subject-matter  of  the  two 
proceedings  appears  to  be  entirely  distinct.  (Burton  Medicine 
Co.  vs.  United  Drug  Co.,  179  O.  G.,  288.) 

Appeals. 

From  an  adverse  decision  of  the  examiner  in  charge  of  trade 
marks  upon  an  applicant's  right  to  register  a  trade  mark,  or  to 
renew  the  registration  of  a  trade  mark,  or  from  a  decision  of  the 
examiner  in  charge  of  interferences,  an  appeal  may  be  taken  to 
the  Commissioner  in  person,  upon  payment  of  the  fee  required 
by  law. 

Upon  receiving  a  petition  stating  concisely  and  clearly  any 
proper  question  which  has  been  acted  upon  by  the  examiner  in 
charge  of  trade  marks  and  which  does  not  involve  the  merits  of 
the  trade  mark  claimed,  the  refusal  of  registration  of  the  trade 
mark,  or  a  requirement  for  division,  and  also  stating  the  facts 
involved  and  the  point  or  points  to  be  reviewed,  an  order  will 
be  made  fixing  a  time  for  hearing  such  petition  by  the  Commis- 
sioner, and  directing  the  examiner  to  furnish  a  written  statement 
of  the  ground  of  his  decision  upon  the  matters  averred  in  such 
petition  within  five  days  after  being  notified  of  the  order  fixing 
the  day  of  hearing.  The  examiner  shall,  at  the  time  of  making 
such  statement,  furnish  a  copy  thereof  to  the  petitioner.  No  fee 
is  required  for  such  a  petition. 

From  the  adverse  decision  of  the  Commissioner  of  Patents 
upon  the  right  of  an  applicant  to  register  a  trade  mark,  or  to 
renew  the  registration  of  a  trade  mark,  or  from  the  decision  of 
the  Commissioner  in  cases  of  interference,  opposition  or  cancel- 
lation, an  appeal  may  be  taken  to  the  court  of  appeals  of  the 
District  of  Columbia  in  the  manner  prescribed  by  the  rules  of 
that  court. 

Assignments. 

Every  registered  trade  mark  and  every  mark  for  the  registra- 
tion of  which  application  has  been  made,  together  with  the 
application  for  registration  thereof,  shall  be  assignable  in  con- 
nection with  the  good  will  of  the  business  in  which  the  mark  is 
used.  Such  assignment  must  be  by  an  instrument  in  writing  and 
duly  acknowledged  according  to  the  laws  of  the  country  or  State 
in  which  the  same  is  executed.  Provision  is  made  for  recording 
such  assignments  in  the  Patent  Office;  but  no  such  assignment 
will  be  recorded  unless  it  is  in  the  English  language,  nor  unless 
an  application  for  the  registration  of  the  mark  shall  have  been 


544  UNITED  STATES  OF  AMERICA 

first  filed  in  the  Patent  Office,  and  such  assignment  must  identify 
the  application  by  serial  number  and  date  of  filing,  or,  when  the 
mark  has  been  registered,  by  the  certificate  number  and  the  date 
thereof.  No  particular  form  of  assignment  is  prescribed. 

An  assignment  shall  be  void  as  against  any  subsequent  pur- 
chaser for  a  valuable  consideration,  without  notice,  unless  it  be 
recorded  in  the  Patent  Office  within  three  months  from  the  date 
thereof. 

The  certificate  of  registration  may  be  issued  to  the  assignee  of 
the  applicant,  but  the  assignment  must  first  be  entered  of  record 
in  the  Patent  Office. 

A  decision  of  the  New  York  Supreme  Court  at  special  term 
illustrates  the  principle,  that  the  sale  of  a  business  carries  with 
it  the  trade  mark  and  good  will.  The  trustee  of  a  bankrupt 
corporation,  sold,  by  order  of  the  court,  all  the  property  of  the 
bankrupt,  except  the  accounts  and  bills  receivable.  Subsequently 
he  was  authorized  by  the  court  to  sell  the  good  will  of  the  busi- 
ness formerly  conducted  by  the  bankrupt  and  the  trade  mark 
used  in  connection  therewith,  the  word  "Hydrolithic."  There- 
upon he  executed  an  assignment  of  such  trade  mark  and  good 
will.  In  the  adjustment  of  conflicting  claims,  arising  out  of 
these  two  transactions,  the  court  held,  that  the  purchaser  of  the 
assets  of  the  bankrupt  acquired  the  good  will  and  the  trade  mark 
so  that  the  second  assignee  took  nothing  under  the  conveyance 
from  the  trustee.  (Waterproofing  Co.  vs.  Hydrolithic  Cement 
Co.,  N.  Y.  Law  Journal,  Dec.  23,  1911.) 

Recording  Trade  Marks  with  Collectors  of  Customs. 

No  small  advantage  is  obtained  after  registration  of  a  mark 
has  been  secured  by  complying  with  the  provisions  of  Section 
27  of  the  Act.  The  Treasury  Department  has  issued  the  fol- 
lowing order  for  the  enforcement  of  said  section : 

Trade  Marks. 

TREASURY  DEPARTMENT,  September  7,  1909. 
To  collectors  of  customs  and  others  concerned: 

The  attention  of  officers  of  the  customs  and  others  is  invited 
to  the  following  provisions 'of  Section  27  of  the  Act,  approved 
February  20,  1905,  effective  April  1,  1905: 

"SEC.  27.  That  no  article*  of  imported  merchandise  which  shall 
copy  or  simulate  the  name  of  any  domestic  manufacture,  or 
manufacturer  or  trader,  or  of  any  manufacturer  or  trader  located 
in  any  foreign  country  which,  by  treaty,  convention,  or  law 
affords  similar  privileges  to  citizens  of  the  United  States,  or 
which  shall  copy  or  simulate  a  trade  mark  registered  in  accord- 
ance with  the  provisions  of  this  Act,  or  shall  bear  a  name  or 
mark  calculated  to  induce  the  public  to  believe  that  the  article 


UNITED  STATES  OF  AMERICA  545 

is  manufactured  in  the  United  States,  or  that  it  is  manufactured 
in  any  foreign  country  or  locality  other  than  the  country  or 
locality  in  which  it  is  in  fact  manufactured,  shall  be  admitted  to 
entry  at  any  custom-house  of  the  United  States,  and,  in  order 
to  aid  the  officers  of  the  customs  in  enforcing  this  prohibition, 
any  domestic  manufacturer  or  trader,  and  any  foreign  manu- 
facturer or  trader,  who  is  entitled  under  the  provisions  of  a 
treaty,  convention,  declaration,  or  agreement  between  the  United 
States  and  any  foreign  country  to  the  advantages  afforded  by 
law  to  citizens  of  the  United  States  in  respect  to  trade  marks 
and  commercial  names,  may  require  his  name  and  residence,  and 
the  name  of  the  locality  in  which  his  goods  are  manufactured, 
and  a  copy  of  the  certificate  of  registration  of  his  trade  mark, 
issued  in  accordance  with  the  provisions  of  this  Act,  to  be  rec- 
orded in  books  which  shall  be  kept  for  this  purpose  in  the 
Department  of  the  Treasury,  under  such  regulations  as  the 
Secretary  of  the  Treasury  shall  prescribe,  and  may  furnish  to 
the  Department  facsimiles  of  his  name,  the  name  of  the  locality 
in  which  his  goods  are  manufactured,  or  of  his  registered  trade 
mark;  and  thereupon  the  Secretary  of  the  Treasury  shall  cause 
one  or  more  copies  of  the  same  to  be  transmitted  to  each  collector 
or  other  proper  officer  of  customs." 

The  provisions  of  this  section  give  to  manufacturers  and 
traders  located  in  foreign  countries,  which,  by  treaty  stipulations, 
give  similar  privileges  to  the  United  States,  the  same  advantages 
as  are  given  to  domestic  manufacturers  and  traders.  The  act 
does  not  affect  names  or  trade  marks  heretofore  recorded  in 
the  Treasury  Department,  and  as  to  them  the  protection  granted 
so  far  as  concerns  prohibition  of  importation  will  continue.  Nor 
does  the  act  appear  to  make  it  compulsory  on  the  part  of 
domestic  manufacturers  or  traders,  or  foreign  manufacturers  or 
traders,  to  register  names  (not  trade  marks)  with  the  Commis- 
sioner of  Patents,  in  order  to  prevent  illegal  importations. 

Domestic  manufacturers  and  traders  and  foreign  manufac- 
turers and  traders,  to  avail  themselves  of  the  privileges  of  the 
act,  so  far  as  concerns  trade  marks,  are  required  to  register  their 
trade  marks  with  the  Commissioner  of  Patents  before  the  Treas- 
ury Department  can  act. 

Applications  for  recording  the  names  and  trade  marks  in  this 
Department  under  Section  27  will  state  the  name  of  the  owner, 
his  residence,  and  the  locality  in  which  his  goods  are  manufac- 
tured, and  in  the  case  of  trade  marks  should  be  accompanied 
with  a  certified  copy  of  the  certificate  of  registration  of  his 
trade  mark  issued  in  accordance  with  the  provisions  of  the  act 
and  the  names  of  the  ports  to  which  facsimiles  should  be  sent. 
In  the  case  of  the  name  of  a  domestic  manufacture,  manufac- 
turer, or  trader  (not  registered  as  a  trade  mark  in  the  Patent 
Office),  the  application  must  be  accompanied  by  the  proper 

85 


546  t'xiTED  STATES  OF  AMERICA 

proof  of  ownership  and  proof  as  to  the  country  or  locality  in 
which  his  goods  are  manufactured,  which  must  consist  of  the 
affidavit  of  the  owner  or  one  of  the  owners,  certified  by  an 
officer  entitled  to  administer  oaths  and  having  a  seal. 

On  the  receipt  by  a  customs  officer  of  any  such  facsimiles, 
with  information  from  the  Department  that  they  have  been 
recorded  therein,  he  will  properly  record  and  file  them  and  will 
exercise  care  to  prevent  the « entry  at  the  custom  house  of  any 
article  of  foreign  manufacture  copying  or  simulating  such  mark. 

No  fees  are  charged  for  recording  trade  marks  in  the  Treas- 
ury Department  and  custom  houses. 

A  sufficient  number  of  facsimiles  should  be  forwarded  to 
enable  the  Department  to  send  one  copy  to  each  port  named 
in  the  application,  with  ten  additional  copies  for  the  files  of  the 
Department. 

Especial  attention  is  invited  to  the  provision  in  said  section 
prohibiting  the  entry  of  articles  "which  shall  bear  a  name  or 
mark  calculated  to  induce  the  public  to  believe  that  the  article 
is  manufactured  in  the  United  States,  or  that  it  is  manufactured 
in  any  foreign  country  or  locality  other  than  the  country  or 
locality  in  which  it  is  in  fact  manufactured,"  and  collectors  and 
other  officers  of  the  customs  are  instructed  to  use  due  diligence 
to  prevent  violations  of  this  provision. 

The  provisions  of  the  act  also  apply  to  Porto  Rico,  the  Philip- 
pine Islands,  Hawaii,  and  any  other  territory  under  the  jurisdic- 
tion and  control  of  the  United  States. 

Attention  is  also  invited  to  the  following  provisions  of  Section 
3  of  the  act  approved  May  4,  190G,  effective  July  1,  1906 : 

"SEC.  3.  That  any  owner  of  a  trade  mark  who  shall  have  a 
manufacturing  establishment  within  the  territory  of  the  United 
States  shall  be  accorded,  so  far  as  the  registration  and  protec- 
tion of  trade  marks  used  on  the  products  of  such  establishments 
are  concerned,  the  same  rights  and  privileges  that  are  accorded 
to  owners  of  trade  marks  domiciled  within  the  territory  of  the 
United  States  by  the  Act  entitled  "An  Act  to  authorize  the  reg- 
istration of  trade  marks  used  in  commerce  with  foreign  nations 
or  among  the  several  States  or  with  Indian  tribes,  and  to  protect 
the  same,"  approved  February  twentieth,  nineteen  hundred  and 
five." 

This  Department  has  ruled  that  affidavits  accompanying  ap- 
plications   for    recording   the   names   of    foreign    manufactures, 
manufacturers,  or  traders  (not  registered  as  trade  marks  in  the 
Patent  Office)  may  be  certified  bv  American  consular  officers. 
JAMES  B.  REYNOLDS,  Acting  Secretary. 

Classification  of  Merchandise  Under  the  Act  of  May  4,  /pod. 

By  Section  2  of  the  Act  of  May  4,  1906,  amending  the  Trade 
Mark  Act,  the  Commissioner  of  Patents  was  required  to  establish 


UNITED  STATES  OF  AMERICA  547 

classes  of  merchandise  for  the  purpose  of  trade  mark  registra- 
tion. All  goods  are  now  classified  in  49  classes,  as  shown  by 
the  official  classification  appearing  below. 

The  numbers  of  the  classes  run  from  1  to  50,  inclusive,  except 
that  there  is  no  class  18,  this  class  having  been  abolished  after 
fifty  classes  had  been  established.  The  titles  of  the  class  should 
appear  in  the  application  exactly  as  stated  in  this  official  classifi- 
cation ;  no  change  whatever  should  be  made.  To  make  any 
changes  will  result  in  the  requirement  for  an  amendment  as 
soon  as  the  change  is  noted  by  the  Examiner  of  Trade  Marks 
or  his  assistants.  If  any  change  escapes  their  notice,  and  the 
application  is  passed  to  issue,  the  case  will  be  withdrawn  from 
the  issue  and  the  change  be  required  to  be  made  if  the  error  is 
discovered  by  the  proofreaders.  No  contest  has  ever  resulted 
over  the  question  whether  the  classification  adopted  is  fair  to  all 
concerned.  The  number  of  classes  is  less  than  the  number 
adopted  by  the  International  Bureau  at  Berne,  the  French  and 
some  other  foreign  Patent  Offices.  Classes  13,  39  and  46  are 
very  broad  and  general.  These  often  enable  a  manufacturer  or 
producer  of  such  lines  of  goods  to  include  all  the  goods  or 
produce  handled  by  him. 

1.  Raw  or  partly  prepared  materials. 

2.  Receptacles. 

3.  Baggage,  horse  equipments,  portfolios,  and  pocketbooks. 

4.  Abrasive,  detergent,  and  polishing  materials. 

5.  Adhesives. 

6.  Chemicals,  medicines,  and  pharmaceutical  preparations. 

7.  Cordage. 

8.  Smokers'  articles,  not  including  tobacco  products. 

9.  Explosives,  firearms,  equipments  and  projectiles. 

10.  Fertilizers. 

11.  Inks  and  inking  materials. 

12.  Construction  materials. 

13.  Hardware  and  plumbing  and  steam-fitting  supplies. 

14.  Metals  and  metal  castings  and  forgings. 

15.  Oils  and  greases. 

16.  Paints  and  painters'  materials. 

17.  Tobacco  products. 

19.  Vehicles,  not  including  engines. 

20.  Linoleum  and  oiled  cloth. 

21.  Electrical  apparatus,  machines  and  supplies. 

22.  Games,  toys  and  sporting  goods. 

23.  Cutlery,  machinery,  and  tools  and  parts  thereof. 

24.  Laundry  appliances  and  machines. 


548  UNITED  STATES  OF  AMERICA 

25.  Locks  and  safes. 

26.  Measuring  and  scientific  appliances. 

27.  Horological  instruments. 

28.  Jewelry  and  precious  metal  ware. 

29.  Brooms,  brushes  and  dusters. 

30.  Crockery,  earthenware  and  porcelain. 

31.  Filters  and  refrigerators. 

32.  Furniture  and  upholstery. 

33.  Glassware. 

34.  Heating,  lighting  and  ventilating  apparatus,  not  including 
electrical  apparatus. 

35.  Belting,  hose,  machinery  packing,  and  non-metallic  tires. 

36.  Musical  instruments  and  supplies. 

37.  Paper  and  stationery. 

38.  Prints  and  nublications. 

39.  Clothing. 

40.  Fancy  goods,  furnishings  and  notions. 

41.  Canes,  parasols  and  umbrellas. 

42.  Knitted,  netted  and  textile  fabrics. 

43.  Thread  and  yarn. 

44.  Dental,  medical  and  surgical  appliances. 

45.  Beverages,  non-alcoholic. 

46.  Foods  and  ingredients  of  foods. 

47.  Wines. 

48.  Malt  extracts  and  liquors. 

49.  Distilled  alcoholic  liquors. 

50.  Merchandise  not  otherwise  classified 

Note. — Class  18  was  abolished  February  24,  1909. 

Law  in   Force   in   The   United  States  to  Prevent   the  Sale   or 
Importation  of  Goods  Bearing  a  False  Indication  of  Origin. 

Section  27  of  the  Trade  Marks  Act  of  1905  prohibits  the 
importation  of  articles  bearing  a  false  copy  or  imitation  of  trade 
marks  registered  in  the  United  States,  or  of  a  trade  mark 
recorded  in  the  United  States  Treasury  Department,  or  bearing 
a  false  indication  of  United  States  or  foreign  origin. 

The  protection  of  the  Act  as  regards  trade  marks  and  trade 
names  is  extended  to  foreigners  resident  in  countries  which  give 
similar  privileges  to  the  citizens  of  the  United  States,  provided 
they  duly  register  their  trade  marks  or  record  their  trade  names 
in  the  United  States.  Anyone  unlawfully  using  a  trade  mark 
registered  under  the  Act  is  liable  to  an  action  for  damages  at 
the  suit  of  the  owner.  Only  civil  actions  are  possible.  Repre- 


UNITED  STATES  OF  AMERICA  549 

sentatives  of  foreign  governments  cannot  initiate  proceedings. 
Damages  may  also  be  claimed  for  the  imitation  of  trade  marks 
not  registered  in  the  United  States  and  of  other  marks  on  the 
ground  of  unfair  trade  by  the  owner  of  such  marks  who  has 
to  prove  fraudulent  intention. 

By  Section  ?  of  the  1909  Tariff  Act  all  articles  of  foreign 
manufacture  or  production  capable  of  being  marked,  stamped, 
branded,  or  labelled  without  injury,  must  be  marked,  stamped, 
branded,  or  labelled  in  English  so  as  to  indicate  their  country 
of  origin,  and  all  packages  containing  imported  goods  must  be 
marked,  stamped,  branded,  or  labelled  in  English  so  as  to  indicate 
their  country  of  origin. 

Marking  Goods:  "Registered  U.  S.  Patent  Office,"  or  "Reg. 
U.  S.  Pat.  Off." 

Foreigner  Having  Manufacturing  Establishment 
in  The  United  States. 

By  Section  3  of  the  Amendatory  Act  of  May  4,  1906,  it  is 
provided  that  if  the  owner  of  a  trade  mark  has  a  manufacturing 
establishment  within  the  United  States,  he  shall  be  accorded,  so 
far  as  the  registration  and  protection  of  trade  marks  used  on  the 
products  of  such  establishment  are  concerned,  the  same  rights 
and  privileges  which  -are  given  to  owners  of  trade  marks  domi- 
ciled within  the  United  States.  A  special  form  of  application  is 
required  for  registration  of  a  mark  which  is  used  upon  articles 
produced  by  a  foreigner  in  a  manufacturing  establishment 
located  in  this  country.  It  is  not  necessary  to  have  the  mark 
registered  in  the  country  in  which  the  applicant  is  located,  but 
the  applicant  must  swear  that  the  goods  for  which  the  trade 
mark  is  claimed  are  produced  in  an  establishment  located  in  the 
United  States. 

International  Convention. 

Section  4  of  the  Trade  Mark  Act  contains  the  important 
requirement  that  a  certificate  shall  not  be  issued  until  a  foreign 
applicant  has  actually  secured  registration  in  the  country  in 
which  he  is  located.  The  evidence  of  the  fact  of  registration  in 
the  foreign  country  which  has  always  been  accepted  is  the  certi- 
fied copy  of  the  foreign  certificate  (Ex  parte  Beckett,  119  O.  G., 
340),  and  the  copy  must  be  certified  by  the  proper  foreign  gov- 
ernment official.  A  copy  of  the  foreign  certificate  sworn  to  before 
a  United  States  Consul  or  other  official  will  not  be  accepted. 

This  certified  copy  of  the  foreign  certificate  must  be  presented 
if  application  is  made  for  the  registration  of  a  mark  under  the 
ten  year  proviso,  as  well  as  if  the  application  is  for  the  registra- 


550  UNITED  STATES  OF  AMERICA 

tion  of  a  technical  trade  mark.    (E.r  partc  Actien-Gesellschaft  fur 
Aniline-Fabrikation,  129  O.  G.,  2857.) 

DECISIONS. 
Ten-Year  Proviso. 

That  nothing  herein  shall  prevent  the  registration  of  any  mark 
used  by  the  applicant  or  his  predecessors,  or  by  those  from 
whom  title  to  the  mark  is  derived,  in  commerce  with  foreign 
nations  or  among"  the  several  states,  or  with  Indian  tribes,  which 
was  in  actual  and  exclusive  use  as  a  trade  mark  of  the  applicant 
or  his  predecessors  from  whom  he  derived  title  for  ten  years 
next  preceding  the  passage  of  this  Act.  (Section  5.) 

The  fact  that  an  application  for  the  registration  of  a  mark  is 
made  under  the  ten  year  clause,  does  not  preclude  its  registra- 
tion as  a  technical  trade  mark,  if  the  mark  be  registrable  as  such. 
In  the  case,  therefore,  of  such  a  mark,  thus  applied  for,  its 
registrability  is  to  be  determined  by  the  principles  applicable  to 
a  technical  trade  mark.  The  applicant  is  not  bound  to  establish 
actual  and  exclusive  use  for  ten  years  preceding  the  passage  of 
the  Act.  Use  of  a  conflicting  mark,  therefore,  from  a  date  later 
than  the  applicant's  use  of  his  mark,  is  no  bar  to  the  registra- 
tion. (International  Food  Co.  vs.  Price  Baking  Powder  Co., 
150  O.  G.,  827.) 

Upon  an  application  for  the  registration  of  the  word  "Spear- 
mint" as  a  trade  mark  for  chewing  gum,  under  the  ten  year 
clause  of  the  trade  marks  act,  an  opposition  was  filed  by  another 
manufacturer  upon  the  ground  that  the  word  had  not  been  in 
actual  and  exclusive  use  by  the  applicant  for  ten  years  prior 
to  April  1,  1905.  Testimony  being  offered  satisfactorily  show- 
ing the  use  of  the  mark  by  others  within  that  period,  registration 
was  held  to  be  properly  refused.  (Wrigley  &  Co.  vs.  Norris, 
152  O.  G.,  48.) 

The  words  "French  Opera"  as  a  trade  mark  for  coffee,  to- 
gether with  a  picture  of  a  building,  said  to  be  the  French  opera 
house  at  New  Orleans,  is  anticipated  by  the  registration  of  the 
word  "French"  for  chocolate ;  hence  the  former  mark  is  not 
registrable  under  the  ten  year  clause,  because  not  in  actual  and 
exclusive  use  during  the  requisite  period  by  the  applicant.  (Ex 
parte,  American  Coffee  Co.,  152  O.  G.,  229.) 

The  working  of  the  trade  mark  act  is  well  illustrated  in  this 
case,  in  view  of  the  fact  that  the  word  "French"  cited  as  an 
anticipation  of  the  mark  applied  for,  was  itself  registered  under 
the  ten  year  clause  of  the  act,  upon  the  theory  that  it  had  been 
in  exclusive  use  during  the  requisite  time  by  the  registrant, 
whereas  it  is  evident  that,  if  its  use  was  sufficient  to  prevent 
the  registration  of  the  other  mark,  the  use  of  the  other  mark  is 


UNITED  STATES  OF  AMERICA  551 

sufficient   to   invalidate   the    existing    registration   of   the   word 
'Trench." 

Perhaps  the  most  important  construction  that  the  ten  year 
clause  of  the  trade  marks  act  has  received  in  the  Federal  courts 
is  contained  in  a  decision  of  the  Circuit  Court  for  the  Southern 
District  of  New  York,  just  reported. 

The  application  was  for  a  preliminary  injunction,  to  restrain 
the  use  of  the  word  "Knox-All,"  a  trade  mark  for  pencils,  as  an 
infringement  upon  the  mark  "Beats-All"  for  the  same  goods. 
Upon  the  motion  the  defendant  interposed  the  objection,  among 
others,  that  the  complainant's  trade  mark  was  expressive  simply 
of  quality  and  character  and,  therefore,  not  properly  to  be  pro- 
tected as  a  trade  mark.  The  court  said  that,  with  the  objection 
that  the  mark  was  one  of  quality,  it  entirely  agreed  and  without 
proof  in  the  case  that  the  word  had  acquired  a  secondary 
meaning,  as  indicating  goods  of  the  complainant's  manufacture, 
even  though  originally  its  use  was  descriptive,  the  application 
for  injunction  must  fail.  Such  evidence,  however,  the  court 
found  in  the  case,  by  resort  to  the  certificate  of  registration  of 
the  mark  in  the  Patent  Office  under  the  ten  year  clause  of  the 
act.  The  basis  of  the  registration  of  course  was  that,  while  not 
a  technical  trade  mark,  it  had  been  in  actual  and  exclusive  use 
by  the  applicant  for  ten  years  prior  to  the  passage  of  the  act. 
The  court  said  that  this  registration  was  at  least  prima-  facie 
evidence  of  such  secondary  meaning.  Such,  in  the  opinion  of 
the  court  was  the  meaning  of  this  section  of  the  trade  marks  act. 
Instead  of  the  proof  that  has  heretofore  been  necessary  in  suits 
over  marks  of  this  character,  to  show,  by  evidence  of  use  in  the 
trade,  that  the  mark  has  acquired  the  secondary  meaning  in 
question,  Congress  saw  fit  to  establish  an  arbitrary  period.  Use 
during  that  period  having  been  established,  it  is  accepted,  under 
the  act,  as  evidence  of  the  secondary  meaning  attaching  to  the 
mark  and  registration  is  granted,  the  registration  being  there- 
after prima  facie  evidence  of  the  right  to  exclusive  use  of  the 
mark.  The  court,  however,  calls  attention  to  the  fact  that,  under 
the  trade  mark  law,  registration  is  only  prima  facie  proof  in 
any  case,  and  suggests  that  it  is,  therefore,  to  be  considered 
merely  prima  facie  proof  of  the  existence  of  the  secondary 
meaning  and  subject  to  be  rebutted  by  evidence  that  the  mark 
registered  had  not  in  fact,  acquired  the  secondary  meaning  which 
the  registration  prima  facie  indicates.  The  suggestion  is  cer- 
tainly a  novel  and  interesting  one  as  to  the  meaning  of  this  sec- 
tion of  the  act.  It  is  believed,  however,  that  the  only  prima 
facie  effect  of  the  certificate  of  registration  is  as  to  the  actual 
and  exclusive  use  during  the  period  of  ten  years,  and  that  it  is 
the  evidence  of  such  use  which  in  intended  to  be  rebuttable.  So 
far  as  the  right  to  register  is  concerned,  such  actual  and 
exclusive  use  during  the  period  of  ten  years  is  not  prima  facie 


552  UNITED  STATES  OF  AMERICA 

evidence  of  the  secondary  meaning1  attaching  to  the  word,  but 
takes  the  place  of  such  secondary  meaning,  which,  in  the  case 
given,  is  not  required  to  be  established  and  evidence  regarding 
which  would  be  irrelevant,  either  to  prove  or  disprove. 

Upon  the  question  of  infringement  'between  "Beats-All"  and 
"Knox-All"  the  court  entertained  no  doubt,  declaring  that  there 
was  no  such  limitation  as  the  defendant  claimed  upon  infringe- 
ment, to-wit,  that  it  must  consist  in  similarity  either  to  the  eye 
or  the  ear.  In  this  case  the  similarity  is  mainly  one  of  ideas 
and  the  court  cites  the  case  of  the  trade  marks  "Keep-Clean" 
and  "Sta-Kleen,"  as  a  case  in  point.  Citation  might  also  have 
been  made  of  the  trade  mark  "Uneeda,"  held  to  have  been 
infringed  upon  by  the  trade  mark  "Iwanta." 

Comment  on  the  Trade  Mark  Law. 

Registration  under  the  law  of  1905  either  of  marks  already 
registered  or  of  marks  not  heretofore  registered,  though  highly 
desirable,  is  not  in  any  sense  compulsory.  The  common  law 
right  of  property  in  a  trade  mark  gained  by  priority  of  use,  is 
expressly  preserved  and  may  be  enforced  at  law  and  in  equity 
in  the  same  manner  and  with  the  same  effect  as  if  this  law  had 
not  been  passed.  Moreover,  as  to  marks  already  registered 
under  the  old  law,  it  is  provided  that  the  certificates  shall  remain 
in  force  for  the  period  for  which  they  were  issued,  thereby  pre- 
serving such  limited  rights  and  advantages  as  are  evidenced  by 
those  certificates.  Marks  already  registered  may,  however,  be 
registered  under  the  new  law,  and  thus  secure  the  greater 
measure  of  protection  which  it  affords. 

The  wisdom  of  securing  this  protection  is  shown  by  a  con- 
sideration of  the  many  and  important  advantages  of  the  recent 
act. 

As  to  marks  already  registered,  the  conspicuous  advantages 
are  four  in  number: 

1st.  It  gives  jurisdiction  to  the  Federal  courts  of  actions 
against  infringers  engaged  in  interstate  commerce.  Under  the  old 
act,  these  courts  have  jurisdiction  only  when  the  infringing 
mark  is  used  in  foreign  commerce. 

2nd.  In  any  action  for  the  infringement  of  a  registered  trade 
mark  where  the  plaintiff  prevails,  he  may  in  the  discretion  of 
the  court  recover  damages  in  three  times  the  amount  of  damages 
actually  found  to  have  been  sustained. 

3rd.  An  injunction  obtained  in  a  suit  before  the  Federal 
courts  may  be  -  served  and  enforced  anywhere  in  the  United 
States,  instead  of  only  within  the  circuit  where  it  was  issued 
as  formerly. 

4th.  Infringing  labels,  or  wrappers  bearing  marks  found  to 
infringe,  may  be  ordered  delivered  up  and  destroyed. 


UNITED  STATES  OF  AMERICA  553 

5th.  Registrations  under  the  new  law  may  be  made  in  the 
exact  form  in  which  the  mark  is  actually  used.  Formerly  reg- 
istration has  been  so  restricted  by  the  requirement  that  the  "es- 
sential feature"  be  specified,  that  registration  has  seldom  been 
obtainable  in  other  than  a  mutilated  form,  from  which  the  mark 
as  actually  used  was  often  unrecognizable.  By  registration,  the 
mark  may  be  put  upon  the  register  in  the  form  used,  so  that  the 
examination  which  the  Patent  Office  makes  as  a  priliminary  to 
subsequent  registrations,  will  more  accurately  guard  the  regis- 
tered mark  against  the  registration  of  infringements. 

Furthermore,  registration  in  most  foreign  countries  is  obtain- 
able by  an  American  citizen  only  in  the  form  in  which  it  is 
granted  him  at  home.  Under  the  old  law,  the  only  registration 
he  could  obtain  was  in  a  form  which  often  afforded  him  little  or 
no  protection  when  registered  abroad.  It  may  be  important  in 
many  cases  to  re-register  marks  in  the  United  States,  in  the  form 
in  which  they  are  actually  used  for  the  purpose  of  registering 
them  abroad  in  the  same  form.  The  desirability  of  so  doing 
can  be  determined  only  by  the  facts  of  each  case. 

The  advantages  above  enumerated  apply  equally,  of  course, 
to  marks  that  have  never  been  registered  in  the  Patent  Office. 
But  there  are  additional  reasons  why  these  latter  marks  should 
now  be  placed  upon  the  register.  Marks  used  in  interstate 
commerce  are  registrable  under  the  law,  instead  of  marks  used 
only  in  foreign  commerce,  as  formerly.  Moreover,  any  mark 
that  has  been  in  actual  and  exclusive  use  as  a  trade  mark  for 
ten  years  past  may  be  registered  although  not  within  the  com- 
mon law  definition  of  a  trade  mark.  This  provision  is  intended 
to  extend  the  protection  of  the  law  to  any  mark  which  by  long 
continued  and  exclusive  use  has  acquired  a  distinctive  character 
as  a  designation  of  the  goods  of  a  particular  maker,  whether 
that  mark  at  the  time  of  its  adoption  was  a  good  trade  mark 
or  not. 

Constitutionality  of  the  Trade  Mark  Laiv,  1905. 

Upon  an  opposition  to  the  registration  of  a  trade  mark,  the 
opponent  contended  that  the  act  was  unconstitutional  and  offered 
that  as  a  reason  why  the  applicant's  mark  should  be  refused 
registration.  In  passing  upon  this  contention,  the  court  said : 

"If  the  act  is  void  it  may  be  pertinently  inquired — How  can 
the  opponent  make  use  of  the  act  for  the  purposes  of  opposition  ? 
A  void  act  must  be  void  as  to  the  opponent  no  less  than  as  to 
the  applicant.  It  cannot  be  that  an  act  utterly  void  because 
dealing  with  a  subject-matter  upon  which  the  legislation  had  no 
right  to  speak,  nevertheless  provides  the  procedure  upon  which 
the  opponent  may  challenge  the  validity  of  the  act  itself.  The 
opponent  has  no  standing  whatever  as  a  party  to  this  proceeding 
except  by  the  provisions  of  the  very  act  which  he  says  is  entirely 


554  UNITED  STATES  OF  AMERICA 

void.     Therefore,  his  objection,  if  true,  cuts  the  ground   from 
under  his  own  feet." 

The  court  further  said  that,  assuming  that  the  act  was  un- 
constitutional, an  additional  reason  existed  why  the  question 
could  not  be  raised  by  the  opponent,  in  that — under  those  circum- 
stances, the  registration  of  the  mark  would  not  in  any  way  prej- 
udice the  latter's  rights,  for,  if  the  act  was  unconstitutional,  the 
registration  would  be  vo^d  and  no  property  right  of  the  opponent 
could  be  thereby  threatened,  nor  any  cloud  cast  upon  his  title  to 
his  own  mark  by  such  registration. 


Marks  Simulating  the  Seal  of  The  United  States. 

Application  was  made  for  the  registration  of  a  trade  mark 
described  as  follows: 

"The  trade  mark  of  said  corporation  consists  of  the  represen- 
tation of  an  eagle  with  spread  wings,  perched  upon  the  American 
shield,  and  holding  in  its  exposed  talons  arrows  and  branches 
of  laurel,  there  being  in  the  background  the  representations  of 
stars  and  the  exposed  ends  of  several  American  flags,  the  whole 
being  enclosed  within  the  concentric  circles  appearing  within  a 
seal-like  border,  and  the  words  'American  Seal/  which  appear 
in  the  upper  portion  of  the  seal-like  border." 

Registration  was  refused  by  the  Commissioner  upon  the 
ground  that  the  mark  was  a  simulation  of  the  coat  of  arms  of 
the  United  States.  Upon  appeal  the  court  held  that  the  decision 
of  the  Commissioner  was  correct,  although  the  mark  was  more 
a  simulation  of  the  seal  of  the  Department  of  Justice  than  of  the 
great  seal  of  the  United  States,  and  the  mark  was  refused.  (Re 
William  Connors  Paint  Mfg.  Co.,  123  O.  G.,  999.) 

Upon  an  application  for  the  registration  of  a  trade  mark  de- 
scribed as  consisting  of  the  words  "New  England,"  together  with 
the  representation  of  a  spread  eagle,  holding  in  its  talons  arrows 
and  an  olive  branch  and  having  a  shield  upon  its  breast,  the 
court  said  that  the  registration  was  properly  refused.  It  was 
contended  on  the  part  of  the  applicant  that  Congress  intended 
to  recognize  a  vested  right  in  persons  who  had  already  used 
such  marks  to  continue  to  register  them,  and  to  prevent  other 
citizens  from  registering  other  marks  of  the  same  class.  The 
court,  however,  overruled  the  contention,  saying  that  the  law 
which  prohibited  the  use  of  such  simulations  of  the  great  seal 
of  the  United  States  was  the  law  for  all  alike,  and,  while  the 
court  would  be  slow  to  interfere  with  property  rights,  no  person 
could  have,  in  the  sense  of  the  act,  any  right  to  the  exclusive 
use  of  the  seal  of  the  government  and  could  not,  therefore,  claim 
any  prescriptive  right  to  the  use  of  a  mark  the  use  of  which  was 
prohibited  by  the  law.  (Re  American  Glue  Co.,  123  O.  G.,  999.) 


UNITED  STATES  OF  AMERICA  555 


It  is  well  known  that  by  act  of  Congress  of  1905,  the  use  of 
the  red  cross  for  commercial  purposes  was  prohibited,  except  as 
to  those  whose  use  thereof  began  prior  to  the  date  of  passage  of 
the  act,  and  whose  rights  to  continue  in  the  use  thereof  are 
reserved  by  the  provisions  of  the  statute.  In  a  suit  brought  by 
one  who  had  made  use  of  the  red  cross  trade  mark  long  prior 
to  the  year  1905,  a  variety  of  defenses  was  interposed.  It  was 
contended  first,  that  the  use  of  the  mark  was  meant  to  indicate 
and  did  indicate  to  purchasers  of  the  goods,  that  the  Red  Cross 
Society  was  in  some  way  connected  with,  or  concerned  in  the 
sale  of  the  goods.  The  court  said,  however,  that  the  commercial 
use  of  the  symbol  was  too  common  to  deceive  the  public  in  any 
such  way  as  was  claimed  by  the  defendant.  Doubtless  it  con- 
tains a  suggestion  that  the  goods  were  produced  under  sanitary 
conditions,  or  that  they  are  clean,  and  free  from  contamination. 
Doubtless,  also,  the  use  of  the  mark  is  confined  to  articles  to 
which  the  suggestion  of  cleanliness  and  sanitary  conditions  of 
production  is  appropriate.  The  growth  of  popular  sentiment  in 
favor  of  cleanliness  as  an  aid  to  health,  gives  value  to  anything 
suggesting  such  conditions  of  manufacture.  Merchants  have 
taken  advantage  of  this  education  of  the  public  and  have  un- 
doubtedly used  the  red  cross  to  indicate  that  their  wares  are 
made  under  sanitary  conditions.  It  is  pretty  clear  that  the 
symbol  has  been  selected  as  a  means  of  making  this  suggestion 
to  the  prospective  purchaser.  The  sugeestiveness  of  the  mark, 
however,  is  far  from  making  it  descriptive.  The  use  of  the 
symbol  has  now  become  too  common,  to  convey  an  impression 
that  the  society  is  in  any  way  concerned  in  the  manufacture  of 
the  goods,  and  the  prevalence  of  such  use  was  clearly  recognized 
by  Congress,  when  it  permitted  all  those  who  had  used  the  mark 
as  a  trade  mark,  prior  to  1905,  to  continue  in  the  use  thereof. 

It  was  further  contended  by  the  defendant  that  the  addition 
to  the  symbol  of  the  words  "red  cross  brush"  was  a  further  means 
of  deception  and  fraud,  in  that  it  induced  a  belief  in  the  existence 
of  some  connection  between  the  goods  and  the  society. 

The  court,  however,  said  that  there  was  no  more  fraud  in  the 
use  of  the  words  than  in  the  use  of  the  symbol,  since  the  one 
neither  added  to  nor  subtracted  from  the  effect  of  the  other. 

The  defendant  maintained  that,  the  use  of  the  trade  mark  by 
the  camplainant  having  been  confined  during  a  long  period  of 
time  to  a  single  style  and  material  of  brush,  the  mark  must  be 
•regarded  not  as  a  trade  mark,  but  as  a  mere  mark  of  quality,  to 
distinguish  that  brush  from  the  other  brushes  made  by  the  com- 
plainant. The  court  said,  however,  that  the  question  whether 
the  mark  was  one  of  quality  was  to  be  determined  by  the  manner 
in  which  the  consuming  public  understood  it.  Certainly  it  could 


556  UNITED  STATES  OF  AMERICA 

not  be  supposed  that  a  mark,  intended  and  believed  to  express 
origin  only,  becomes  any  the  less  distinctive  as  a  trade  niark, 
because  it  is  used  on  a  portion  of  the  maker's  goods  or  on  a 
single  line  thereof.  If  the  complainant  wished  to  push  one 
particular  brush,  there  is  no  reason  why  he  should  not  put  upon 
it  his  best  trade  mark  and  give  it  as  much  advertising  as  he 
deemed  expedient.  In  short,  the  use  of  a  mark  on  a  limited 
class  of  trade  marked  goods  does  not  necessarily  make  it  a 
symbol  of  quality.  Where  the  mark  was  not  intended  to  indicate 
quality,  but  origin,  there  must  be  some  affirmative  proof  that  it 
had  by  use  acquired  a  force  other  than  that  originally  intended. 
The  presumption  is  that  it  means  to  others  what  it  was  intended 
to  mean.  There  have  been  cases  where  marks  originally  used  to 
indicate  quality  or  grade,  have  in  time  acquired  an  added  signifi- 
cance of  origin  or  make,  and  have  so  become  entitled  to  protec- 
tion as  trade  marks ;  but  there  are  no  cases  where  a  mark, 
adopted  and  used  as  a  trade  mark,  has  come  to  be  understood 
as  a  mark  of  quality,  because  limited  in  use  to  one  kind  of 
goods. 

To  the  defense  that  the  use  of  the  red  cross  as  a  trade  mark  is 
against  public  policy,  the  court  said  there  could  be  but  one 
answer.  Congress  having  definitely  declared  that  it  would  per- 
mit the  use  of  the  marks  by  those  who  had  used  them  prior  to 
the  year  1905,  it  has  legalized  the  use  of  the  symbol,  and  the 
question  of  public  policy,  which  was  one  for  the  determination 
of  Congress  only,  must  now  be  considered  as  closed. 

It  was  finally  maintained  that  the  complainant,  having  already 
two  trade  marks  upon  his  brushes,  could  not  lawfully  add  a 
third.  The  court  expressed  itself  as  being  unable  to  see  why  it 
should  not  recognize  any  number  of  trade  marks  that  were 
actually  such.  If  a  man  can  show  that  the  public  has  in  fact 
come  to  recognize  each  of  six  marks  used  together  as  separately 
indicating  his  manufacture,  it  should  be  no  concern  of  the  court 
to  interfere,  if  the  public  has  solved  the  difficulty  of  more  than 
one  mark,  it  would  be  officious  for  the  court  to  forbid  the  maker 
to  continue  in  the  use  of  what  the  public  already  understands. 
In  the  case  of  the  red  cross,  this  was  the  most  conspicuous  of 
the  three  marks  upon  the  article  and  therefore  it  could  not  but  be 
presumed  that  it  would  serve  as  a  mark  of  identification  by 
purchasers  thereof. 

The  court  cites  the  cases  of  the  Capewell  Horsenail  Company 
against  Mooney  as  authority  for  'the  proposition  that  a  manu- 
facturer could  have  more  than  one  trade  mark  for  his  goods. 
In  that  case,  it  is  pointed  out,  the  one  mark  was  used  on  the 
nail  and  the  other  on  the  box,  but  that  only  made  the  probability 


UNITED  STATES  OF  AMERICA  557 

of  confusion  between  the  marks  greater.  If,  therefore,  such  sep- 
arate use  of  a  plurality  of  marks  is  allowable,  much  more  should 
it  be  permitted  to  use  a  number  of  marks  in  combination. 

Descriptive  Terms. 

The  words  "lait  de  violettes,"  for  perfumery,  and  other  toilet 
preparations,  are  descriptive  of  character  or  quality.  The  words, 
which  translated  mean  "milk  of  violets,"  indicate  that  the  goods 
contain,  as  an  ingredient,  a  milk,  juice  or  extract  of  violet. 
Whether,  therefore,  the  extract  or  essence  of  violets  actually 
enters  into  the  composition  of  the  goods,  is  immaterial,  since 
the  mark,  if  not  descriptive  of  the  character  or  ingredients  of 
the  goods,  is  deceptive  and  in  neither  case  registrable.  (Ex 
parte,  Bagot  &  Co.,  150  O.  G.,  1042.) 

The  word  "cream"  as  applied  to  baking  powder  is  not  descrip- 
tive and  is  entitled  to  registration.  In  support  of  his  opinion, 
the  commissioner  cites  the  fact  that  the  validity  of  the  mark  has 
been  twice  declared  in  suits  brought  by  the  applicant  against 
infringers  in  the  United  States  circuit  court.  In  one  of  these 
cases,  the  court  said  that  the  word  does  not  describe  an  ingre- 
dient of  the  article,  its  quality,  or  kind.  The  baking  powder  is 
not  composed,  either  in  whole  or  in  part,  of  cream,  nor  does  that 
word  convey  the  idea  that  it  is  the  best  or  choicest.  It  is  true 
the  word  is  often  used  to  designate  the  best  part  of  a  particular 
thing,  but  not  the  thing  itself,  and  only  in  that  relation  has  the 
word  any  descripive  force.  International  Food  Co.  vs.  Price 
Baking  Powder  Co.,  150,  O.  G.,  827.) 

The  word  "fussy"  is  not  registrable  as  a  trade  mark  for 
candy,  being  a  descriptive  term,  particularly  where  used  in  the 
phrase,  "A  fussy  package  for  fastidious  folk."  The  office  of  a 
trade  mark  is  to  indicate  origin  or  ownership.  To  be  registra- 
ble it  must  be  so  used  as  to  signify  the  source  or  origin  of  the 
merchandise  to  which  it  is  applied.  As  employed  in  the  above 
phrase,  however,  it  is  only  an  adjective,  qualifying  the  word 
"package."  (Ex  parte.  Whitman  &  Son,  151,  O.  G.,  193.) 

The  word  "riteshape"  for  wooden  dishes,  is  obviously  descrip- 
tive, being  a  mere  misspelling  of  the  words  "right"  and  "shape" 
and.  therefore  not  registrable.  (Ex  parte,  Sweers.  21  Gour, 
Wash.  Dig.,  93.) 

Whether  the  words  "easy  day"  as  a  trade  mark  for  washing 
compounds,  are  descriptive  or  not.  may  be  open  to  question. 
Where  the  re«ord  shows  a  prior  registration  of  the  same  mark, 
an  interference  will  be  declared  at  the  request  of  the  applicant, 
who  claims  priority  of  use,  any  doubt  as  to  the  descriptive  char- 
acter of  the  mark  being,  in  such  a  case,  waived  in  his  favor. 
(Ex  parte,  Hitchcock-Hill  Co.,  21  Gour.  Wash.,  Dig.,  95.) 

The   decision   of   the   Commissioner,   holding   that    the   word 


558  UNITED  STATES  OF  AMERICA 

"oolitic"  as  applied  to  paint,  is  descriptive,  indicating  that  the 
paint  contains  oolite,  a  granular  form  of  limestone,  has  been 
accorded  a  rehearing  and  reversed.  Upon  affidavits  that  oolite 
had  never  been  known  as  a  filler  for  paint,  and  could  not,  in 
the  opinion  of  those  skilled  in  the  art,  be  so  used,  it  was  held 
that  "oolitic"  was  not  descriptive  of  any  ingredient  or  quality 
of  the  paint,  but  merely  a  fanciful  term  and  properly  registrable 
as  a  trade  mark.  (Exparte,  A.  Burdsal  Co.,  21  Gour.,  Wash., 
Dig.,  94.) 

The  Red  Cross. 

A  trade  mark  for  cleansing  compounds,  composed  of  the  word 
"rub-a-lac"  arranged  within  the  outline  of  a  Greek  cross,  so  as 
to  read  both  vertically  and  horizontally,  and  printed  in  red,  is 
such  an  imitation  of  the  insignia  of  the  American  Red  Cross 
as  to  fall  within  the  prohibition  of  the  act  forbidding  the  use  of 
the  red  cross  for  commercial  purposes.  (Ex  parte,  Rub-a-lac 
Mfg.  Co.,  21  Gour.,  Wash.,  Dig.,  93.) 

Name  of  a  Patented  Article. 

A  name  applied  to  a  patented  article  during  the  lifetime  of 
the  patent  can  not  be  made  the  subject  of  registration  ns  a  trade 
mark,  even  before  the  expiration  of  the  patent.  This  applica- 
tion of  the  doctrine  of  the  Singer  Case  is  not  to  be  affected  by 
the  claim  of  the  applicant,  that  he  used  the  name  for  several 
years  before  the  granting  of  the  patent  upon  articles  of  similar 
character,  but  which  it  does  not  satisfactorily  appear  were  any 
different  from  the  patented  article.  (Mathy  vs.  Republic  Metal- 
ware  Co.,  21  Gour.,  Wash.,  Dig.,  94.) 

Geographical  Term. 

The  words  "American  Lady"  are  not  registrable  as  a  trade 
mark,  since  the  presence  of  the  geographical  term,  "American," 
in  the  mark  precludes  its  registration.  In  this  decision -the  Com- 
missioner followed  the  doctrine  of  the  court  of  appeals  of  the 
District  of  Columbia,  that  a  descriptive  term,  forming  one  fea- 
ture of  a  trade  mark,  renders  the  mark  as  a  whole  unregistrable. 
(Ex  parte,  Haas  Lieber  Grocery  Co.,  21  Gour.,  Wash.,  Dig., 
94.) 

Conflicting  Marks. 

There  is  no  conflict  in  fact  between  two  trade  marks,  one 
consisting  of  the  picture  of  a  swan,  and  the  other  of  the  words 
"swan's  down."  The  Examiner  of  trade  marks  was  of  the  opin- 
ion that  the  picture  of  a  swan  was  the  alternative  of  the  word 
swan,  and  that  the  word  "swan"  is  so  similar  to  the  words, 
"swan's  down,"  that  confusion  might  result  from  their  contem- 


UNITED  STATES  OF  AMERICA  559 

poraneous  use.  The  commissioner,  however,  says  that  the  test 
of  whether  two  marks,  consisting  respectively  of  a  word  and 
symbol,  are  alternatives  or  equivalents,  is  whether  they  would 
convey  to  the  mind  the  same  idea.  Thus,  it  has  been  held  that 
the  word  "star"  and  a  picture  of  a  star,  the  word  "lion"  and  the 
picture  of  a  lion  are  equivalents.  The  picture  of  a  swan,  how- 
ever, and  the  words  "swan's  down"  do  not  carry  the  same  idea, 
the  one  conveyting  the  idea  of  a  bird  whereas  the  other  suggests 
an  article,  soft  and  fluffy.  (Price  Co.  vs.  Church  &  Dwight 
Co.,  150  O.  G.,  265.) 

Registration  of  the  word  "Powellton"  as  a  trade  mark  for 
coal  is  properly  refused  in  view  of  the  registration  of  the  mark 
"Powell's  Run,"  because  the  former  so  nearly  resembles  the  reg- 
istered mark  as  to  be  likely  to  cause  confusion  in  the  minds  of 
the  public.  It  was  urged  that  no  confusion  had  ever  arisen  be- 
tween them,  although  in  use  for  many  years,  and  that  the  trade, 
which  alone  designates  coal  by  name  to  indicate  its  origin,  would 
not  be  confused  by  the  similarity  of  the  marks.  Furthermore, 
that  the  owners  of  the  registered  mark  had  never  complained, 
by  legal  action,  of  the  applicant's  use  of  its  mark.  These  con- 
tentions were  deemed,  however,  to  be  without  force,  it  being 
w:ell  settled  that  trade  marks  are  addressed  to  the  general  public 
and  not  merely  to  the  trade.  Furthermore,  the  fact  that  no  suit 
had  been  brought  to  enjoin  the  use  of  the  mark  is  immaterial 
on  the  question  of  registrability. 

The  application  to  register  was  made  under  the  ten  year 
clause,  the  mark  being  a  geographical  name,  and  it  was  held 
that,  in  view  of  the  prior  registration,  the  mark  had  not  been 
in  actual  and  exclusive  use  during  the  necessary  ten-year  period. 
(Ex  parte,  Mount  Carbon  Co.,  150,  O.  G.,  828.) 

Names  of  Public  Clwracters. 

The  rule  that  the  names  of  prominent  public  characters  will 
not  be  registered  under  the  trade  mark  law,  received  a  new  ap- 
plication in  the  rejection  of  the  word  mark  "Bwano  Tumbo" 
for  games,  toys  and  sporting  goods.  The  commissioner  held 
that  he  would  take  judicial  notice  of  the  fact  that  the  name  was 
applied  to  Ex-President  Roosevelt  and  had  come  to  be  recog- 
nized as  referring  to  him ;  that  the  designation  was,  therefore, 
within  the  rule  that  it  was  contrary  to  public  policy,  to  encour- 
age the  use  in  trade  of  the  name  of  a  former  president  of  the 
United  States.  (Ex  parte,  Pearse  &  Todd,  21  Gour.,  Wash., 
Dig.,  92.) 

Parties  to  an  Opposition. 

Where  an  opposition  has  been  filed  to  the  registration  of  a 
trade  mark,  application  for  which  is  pending,  the  fact  that  the 
mark  applied  for  has  been  declared  in  interference  with  another 


560  UNITED  STATES  OF  AMERICA 

registered  mark,  is  no  reason  for- making  the  owner  of  the  latter 
mark  a  party  to  the  opposition,  or  compelling  the  opponent  to 
litigate  any  question  with  him.  Neither  can  the  opponent  be 
compelled  to  file  an  application  for  the  registration  of  his  mark, 
in  order  that  he  may  be  made  a  party  to  the  interference.  It 
might  be  desirable  that  the  entire  matter  be  settled  in  a  single 
controversy,  but  there  is  no  way  of  accomplishing  that  end.  (In 
re  Brittain  Tobacco  Works,  150,  O.  G.,  104;}.) 

The  Ten^Year  Clause. 

T.he  fact  that  an  application  for  the  registration  of  a  mark  is 
made  under  the  ten-year  clause",  does  not  preclude  its  registra- 
tion as  a  technical  trade  mark,  if  the  mark  be  registrable  as 
such.  In  the  case,  therefore,  of  such  a  mark,  thus  applied  for, 
its  registrability  is  to  be  determined  by  the  principles  applica- 
ble to  a  technical  trade  mark.  The  applicant  is  not  bound  to 
establish  actual  and  exclusive  use  for  ten  years  preceding  the 
passage  of  the  act.  Use  of  a  conflicting  mark,  therefore,  from 
a  date  later  than  the  applicant's  use  of  his  mark,  is  no  bar  to 
registration.  (International  Food  Co.  vs.  Price  Baking  Pow- 
der Co.,  150,  O.  G.,  827.) 

The  Declaration. 

Where  the  facts  are  incorrectly  stated,  in  a  declaration  form- 
ing part  of  an  application  for  the  registration  of  a  trade  mark, 
it  is  necessary  that  a  new  declaration  be  filed,  since  the  patent 
office  is  without  power  to  change  or  amend  the  declaration.  The 
trade  mark  act  requires  that  the  declaration  be  verified  and  it 
can  not  be  amended,  except  upon  the  oath  of  the  applicant. 
(Ex  parte,  Felten  Actien-Gesellschaft,  150,  O.  G.,  569.) 

Interference — Res  Adjudicata. 

Where,  in  a  trade  mark  interference,  a  decision  is  rendered 
that  neither  party  is  entitled  to  register  the  mark,  the  question  of 
the  right  to  register  is  res  adjudicata,  as  to  any  party  that  does 
not  appeal  from  the  decision  and  that  party  is  not  entitled  to 
further  consideration  of  the  question  in  the  Patent  Office. 

Although  the  decision  in  the  interference  proceeding  held  that 
the  other  party  to  the  proceeding  had  never  used  the  words  as 
a  trade  mark,  this  will  not  help  the  applicant,  since  so  far  as 
he  is  concerned,  the  question  of  his  right  to  register  was  finally 
settled  by  the  interference.  (Ex  parte.  Safety  Remedy  Co.,  K»i>, 
O.  G.,  266.) 

Grounds  for  Cancellation. 

In  order  to  sustain  a  petition  for  the  cancellation  of  a  trade 
mark,  it  is  necessary  that  the  petition  allege  facts,  such  as  will 


UNITED  STATES  OF  AMERICA  1561 

show  damage  to  the  petitioner  from  the  registration  of  the 
mark.  Where,  therefore,  the  mark  sought  to  be  cancelled  is  for 
canned  fruits,  canned  vegetables,  pork  and  beans,  jam,  pre- 
serves and  marmalade,  an  allegation  that  the  petitioner  has  a 
similar  trade  mark  for  coffee,  prior  in  date  of  use  to  that  sought 
to  be  cancelled,  is  immaterial.  The  mere  fact  that  the  goods 
for  which  the  mark  is  registered  and  the  goods  on  which  the 
mark  of  the  petitioner  is  used,  are  classified  in  the  same  class 
under  the  patent  office  classification  as  "foods  and  ingredients 
of  foods,"  does  not  necessarily  constitute  them  goods  of  the 
same  descriptive  properties. 

This  is  so,  notwithstanding  the  decision  of  the  court  of  ap- 
peals in  the  Baker  case,  which  held  that  cocoa  and  coffee  were 
goods  of  the  same  descriptive  properties.  These  latter  articles 
are  both  adapted  to  similar  use  and  are  more  nearly  related  than 
coffee  and  food  products  generally.  (Fischer  &  Co.  vs.  Beck- 
mann  &  Co.,  149,  O.  G.,  1120.) 

What  Is  Infringement  of  a  Registered  Trade  Mark. 

The  trade  mark  law  of  1905,  in  defining  what  shall  constitute 
infringement  upon  a  trade  mark  registered  under  the  act,  says 
that  any  person  who  shall,  without  the  consent  of  the  owner, 
reproduce,  counterfeit,  copy,  or  colorably  imitate,  such  trade 
mark,  and  affix  the  same  to  merchandise  of  the  like  descriptive 
properties  as  those  of  the  owner  of  the  mark,  or  to  labels,  signs, 
prints,  packages,  wrappers  or  receptacles  intended  to  be  used 
upon  or  in  connection  with  the  sale  of  such  merchandise,  shall 
be  liable  for  damages  at  the  suit  of  the  owner  of  the  mark. 

In  the  circuit  court  of  appeals  for  the  eighth  circuit,  the  ques- 
tion has  just  been  raised,  whether  the  use  of  the  trade  mark 
registered  by  another  for  whiskey,  upon  a  sign  placed  before  a 
saloon,  was  an  infringement  upon  the  registered  mark.  The 
mark  consisted  of  the  figures  "905."  The  defendant  was  for- 
merly a  stockholder  and  officer  of  the  complainant  company,  but 
having  disposed  of  his  stock,  started  a  saloon  of  his  own,  plac- 
ing upon  his  sign  his  name,  "A.  Diederich,"  followed  by  the 
words  "Originator  of  905."  The  opinion  of  the  majority  of  the 
court  appears  to  have  strangely  misunderstood  the  language  of 
the  statute.  The  court  rightly  states  that  a  trade  mark,  both  at 
common  law  and  under  the  present  statute,  is  a  mark  used  upon 
goods  to  indicate  their  origin,  and  that  no  mark  not  actually 
applied  to  the  goods  or  to  the  receptacle  or  package  containing 
them,  in  such  a  way  as  to  accompany  the  goods  into  the  hands 
of  the  purchaser,  can  be  a  trade  mark. 

From  this  the  court  concludes  that  the  complainant  could  have 
no  trade  mark  in  a  sign  placed  on  a  building,  containing  the 
figures  "905,"  and  if  the  complainant  could  have  no  trade  mark 

36 


562  UNITED  STATES  OF  AMERICA 

in  such  a  sign,  the  court  said  it  was  unable  to  perceive  how  a 
sign  of  that  character  placed  by  the  defendant  upon  his  build- 
ing, could  be  an  infringement  upon  the  complainant's  trade 
mark,  since  it  is  self-evident  that  what  is  not  a  trade  mark  is 
not  and  can  not  be  infringed  as  a  trade  mark.  The  sufficient 
answer  to  this  argument  is,  that  what  is  a  trade  mark  may, 
under  the  statute,  be  infringed  by  what  is  not.  The  dissenting 
opinion  of  Judge  Sanborn  contains  the  sounder  view,  to  wit,  that 
a  mark  to  be  registered  and  protected  must  be  a  trade  mark,  as 
defined  by  the  opinion  of  the  majority  of  the  court,  a  mark  ap- 
plied to  the  goods  themselves  to  indicate  their  origin ;  neverthe- 
less, the  question  was  not  whether  the  figures  "905"  upon  the 
building  constituted  a  trade  mark,  but  merely  whether  under 
the  statute  they  constituted  an  infringement  of  a  trade  mark,  the 
validity  of  which  was  not  in  question.  The  statute  provides  that 
a  registered  trade  mark  is  infringed  by  the  unauthorized  appli- 
cation thereof  to  a  sign  used  in  connection  with  the  sale  of  other 
goods  and  the  facts  very  clearly  bring  the  present  case  within 
that  provision  of  the  law. 

The  majority  of  the  court  said  that  the  word  "signs"  in  the 
statute  must  be  understood  to  mean  some  symbol  or  emblem  in 
the  nature  of  a  trade  mark  affixed  to  goods.  A  reference,  how- 
ever, to  the  language  of  the  statute  shows  that  this  construction 
of  it  is  absurd  and  that  the  word  "signs"  therein  is  clearly  in- 
tended to  refer,  like  the  word  "prints"  to  an  advertisement  of 
some  character  or  other,  not  to  be  placed  upon  the  goods  but  to 
be  used  in  connection  with  the  sale  thereof.  This  is  all  the  more 
clear  from  a  comparison  of  the  law  of  1881  with  that  of  1905. 
Under  the  law  of  1881,  infringement  was  so  defined  as  to  re- 
quire that  the  imitation  be  affixed  to  merchandise.  Under  the 
law  of  1905,  after  the  provision  regarding  the  affixing  of  the 
imitation  to  merchandise,  were  added  the  words  "or  to  labels, 
signs,  prints,  packages,  wrappers  or  receptacles  intended  to  be 
used  upon  or  in  connection  with  the  sale  of  merchandise."  It 
is  clear  that  the  additional  words  must  have  been  intended  to 
add  something  to  the  law,  and  yet,  as  construed  by  the  majority 
of  the  court,  they  make  the  statute  precisely  equivalent  to  that 
of  1881. 

There  is  no  doubt,  therefore,  that  the  majority  of  the  circuit 
court  of  appeals  was  at  fault  in  this,  the  first  decision  so  far 
as  we  know,  construing  this  provision  of  the  law,  and  that  a 
complete  case  of  infringement  under  the  statute  is  made  out 
when  it  is  shown  that  the  registered  trade  mark  of  another  has 
been  used  upon  a  sign,  for  the  purpose  of  indicating  the  -sale  of 
merchandise  other  than  that  of  the  owner  of  the  mark. 

(Diederich  vs.  W.  Snyder  Wholesale  Wine  &  Liquor  Co.,  195 
Fed.  Rep.,  35.) 


URUGUAY  563 


URUGUAY 

The  Republic  of  Uruguay  is  situated  at  the  most  southern 
part  of  Brazil,  at  the  inlet  of  the  Rio  de  la  Plata,  bounded  on 
the  west  by  the  Argentine  Republic,  from  which  it  is  separated 
by  the  river  Uruguay,  on  the  north  and  northeast  by  Brazil, 
on  the  south  by  the  Rio  de  la  Plata,  and  on  the  east  by  the  At- 
lantic. The  area  of  this  Republic  is  stated  at  about  72,000  Eng- 
lish square  miles.  The  population  is  estimated  at  1,095,700. 

The  chief  industry  of  the  country  consists  in  the  rearing  of 
cattle,  horses  and  sheep  and  the  growing  of  cereals,  also  to  some 
small  extent  of  tobacco,  olives  and  grapes.  Enormous  quanti- 
ties of  cattle  are  annually  slaughtered  for  their  hides  and  tallow. 

One  of  the  most  important  establishments  in  the  Republic  is 
the  one  situated  at  Fray  Bentos  on  the  banks  of  the  river  Uru- 
guay, where  the  famous  "Liebig's  Extract  of  Meat"  is  made. 
Another  important  industry  is  the  export  of  meat  in  a  frozen 
state,  which  under  the  present  Directorate  promises  to  prove 
another  outlet  for  the  surplus  stock  of  cattle  and  sheep  of  this 
country. 

The  most  important  industry  of  the  country,  however,  of 
Uruguay  is  that  of  the  beef  salting  establishment  (Saladeros), 
and  which  give  the  principal  percentage  of  the  exports  in  the 
shape  of  "Charque,"  bone  ash,  bones,  etc.,  to  the  amount  of 
93.53  per  cent,  of  the  whole  exports  of  the  country. 

MONEY — The  peso  (100  centavos)=4s.  (nominal  value)=96 
cents  U.  S. 

WEIGHTS  AND  MEASURES — The  metric  system. 

Law. 
Law  of  July  17th,  1909. 

Term. 

The  protection  granted  by  registration  of  a  mark  extends 
over  a  period  of  ten  years,  which  term  can  always  be  prorogated 
for  a  like  period  at  the  end  of  ten  years  or  when  they  are  about 
to  lapse.  (Art.  12.) 

What  May  Be  Registered. 

The  names  of  objects  or  persons  in  a  particular  form,  sym- 
bols, monograms,  engravings  or  embossings,  stamps,  vignettes 
and  reliefs,  fringes,  fanciful  words  or  names,  letters  or  numbers 
combined  in  a  special  design,  the- wrappers  or  covers  of  articles, 
and  any  other  sign  by  which  it  is  desired  to  distinguish  man- 


564  URUGUAY 

ufactured  and  commercial  articles  or  the  products  of  agricul- 
tural, extractive,  forestal  and  live  stock  industries,  may  be  used 
as  marks.  (Art.  1.) 

What  May  Not  Be  Registered. 

According   to   this   Act,   the   following  may   not  be   used   as 
marks : 

1.  The  letters,  words,  names,  escutcheons  or  distinctive  signs 
that  are  or  may  be  used  by  state  and  municipal  authorities. 

2.  The  form  given  to  the  products,  except  when  more  useful 
or  convenient  than  any  other  for  the  kind  of  commerce  or  indus- 
try to  which  it  is  applied. 

3.  The  color  of  the  article  or  of  the  wrapping;  but  combina- 
tions of  colors  on  wrappings  may  be  used  as  a  mark. 

4.  Technical,  commercial  or  ordinary  names  used  to  express 
qualities  or  attributes  of  the  goods. 

5.  Terms  or  phrases  which  have  passed  into  general  use^and 
signs  which  are  not  fanciful — that  is  to  say,  which  do  not  pre- 
sent any  novel  or  special  character. 

6.  The  designations  usually  employed  to  indicate  the  nature 
of  the  article,  or  the  class,  kind  or  category  to  which  they  belong. 

7.  Drawings  or  phrases  of  an  immoral  character. 

8.  Caricatures,    portraits,    drawings    or    phrases    ridiculing 
ideas,  persons  or  objects  worthy  of  respect. 

9.  The  names  or  portraits  of  living  persons,  unless  their  con- 
sent has  been  obtained ;  and  those  of  deceased  persons,  unless 
with  the  consent  of  their  relatives  within  the  fourth  degree  of 
consanguinity  and  second  of  affinity. 

10.  The    letters,    words,    names,    escutcheons    or    distinctive 
signs  used  by  foreign  states,  unless  evidence  is  produced  by  cer- 
tificate issued  by  the  proper  authorities  of  the  state  in  question 
to  the  effect  that  the  applicant  has  been  duly  authorized  to  make 
commercial  use  of  the  same. 

11.  Words  similar  to  a  commercial  name  or  a  name  known 
in  relation  to  certain  articles.     (Art.  3.) 

Mode  of  Application. 

Those  desirous  of  obtaining  property  in  a  trade  mark  must 
apply  for  the  same  to  the  Ministry  of  Industries,  presenting 
proof  that  they  are  engaged  in  commerce  or  industry.  For  this 
the  presentation  of  their  trade  license  (patente  de  gro)  will 
always  be  sufficient.  For  the  registration  of  foreign  marks  there 
must  be  produced  the  certificate  of  registration  in  the  country 
of  origin  or  satisfactory  evidence  that  may  allow  the  applicants 
to  take  advantage  of  the  preceding  paragraph.  (Art.  15.) 


URUGUAY  565 

The  application  for  registration  of  a  mark  must  also  be  accom- 
panied by — 

1.  Three   copies  of  the   mark  proposed  to  be   used  or  for 
which  application  is  made. 

2.  A  specification  in  duplicate  of  the  mark  in  case  of  figures 
or  emblems,  likewise  stating  the  class  of  objects  for  which  it  is 
intended,  and  if  it  is  to  be  applied  to  products  of  a  factory  or 
of  the  earth,  or  to  goods  of  a  certain  trade. 

3.  The  receipt  of  the  State  Treasury,  proving  that  the  legal 
fees  have  been  paid. 

4.  A    power  of   attorney,    duly   legalized   if   issued    abroad. 
(Art.  16.) 

In  the  application  or  in  the  description  shall  be  stated  a  list 
of  the  articles  which  the  mark  is  to  distinguish,  in  accordance 
with  the  classification.  (Same  as  in  Argentine.) 

In  the  application  shall  be  stated  the  serial  number  belonging 
to  the  categories  and  classes  enumerated ;  and  it  shall  be  drawn 
up  on  the  proper  stamped  paper,  in  plain  characters,  any  amend- 
ments, interlineations  and  erasures  which  it  may  have  being  au- 
thenticated by  the  signature  of  the  applicant. 

When  the  mark  is  to  distinguish  a  single  article,  mention  of 
the  same  and  of  the  class  or  category  in  which  it  is  included  will 
suffice. 

The  parties  interested  shall  also  be  obliged  to  deposit  the 
stamped  paper  necessary  for  the  decrees  which  are  issued,  which, 
however,  may  be  issued  on  ordinary  numbered  paper,  but  they 
shall  not  be  transmitted  to  the  interested  party  nor  considered 
completed  until  such  deposit  has  been  effected. 

The  three  facsimiles  of  the  mark,  which,  according  to  para- 
graph 1  of  Article  16  of  the  law,  must  accompany  the  applica- 
tion, shall  be  printed  in  one  color  only. 

The  electrotype  required  shall  be  made  of  metal  or  wood,  in 
such  condition  as  to  permit  a  clear  impression  of  the  mark,  and 
its  dimensions  shall  be  12  cm.  long  by  6  cm.  wide. 

There  shall  be  exempted  from  the  obligation  of  presenting  the 
electrotype,  registrants  of  those  marks  consisting  of  mere  fan- 
ciful designations  devoid  of  designs  or  special  characters. 

The  said  documents  having  been  copied,  the  Chief  of  the  Sec- 
tion shall  arrange  for  the  publication. 

Compliance  with  the  requirement  for  publication  shall  be 
proved  by  the  addition  to  the  file  by  the  Office  of  first  and  last 
numbers  of  the  Diario  Oficial  containing  same,  for  which  the 
interested  party  shall  pay  the  sum  of  six  pesos. 

Oppositions  to  the  registration  of  trade  marks  as  also  actions 
for  annulment,  legislation  in  regard  to  which  is  contained  in 
Art.  2  of  the  law  shall  be  instituted  before  the  Section  referred 
to. 

The  latter  shall  be   limited  to  depositing  proof  of  the  pre- 


566  URUGUAY 

sentation  of  the  petition,  and  to  submitting  same  to  the  Minis- 
try with  a  report,  adding  thereto  all  the  particulars  which  are 
in  its  possession. 

The  file  having  been  submitted,  opportunity  to  examine  the 
same  shall  be  given  to  the  opponent,  which  examination  shall 
be  concluded  within  ten  days. 

Whether  or  not  this  examination  has  been  concluded  the  case 
shall  be  ready  for  decision,  if  there  are  no  facts  to  be  proven. 

If  evidence  is  to  be  produced  in  each  case  a  term  shall  be  set 
which  shall  not  exceed  fifteen  days  for  the  Department  of  the 
Capital,  thirty  days  when  it  must  be  produced  outside  of  the 
Department  of  the  Capital,  but  within  the  Republic. 

If  the  evidence  has  to  be  produced  from  abroad,  the  term  shall 
be  ninety  days. 

Every  final  decision,  whether  incidental  or  originating  from 
an  ordinary  proceeding,  which  is  pronounced  relative  to  marks, 
shall  be  announced  in  the  Diario  Oficial,  without  such  announce- 
ment being  a  bar  to  its  publication  in  full  when  it  may  be  con- 
sidered necessary. 

This  announcement  shall  be  considered  sufficient  notification 
to  the  interested  party,  and  the  periods  shall  commence  to  run 
from  the  day  following  the  said  announcement. 

This  provision,  as  also  that  contained  in  Art.  13,  shall  be  un- 
derstood to  be  without  prejudice  to  the  decrees,  which,  to  thor- 
oughly elucidate  the  matter,  it  is  believed  should  in  some  cases 
be  issued,  or  to  the  personal  notifications  which  are  deemed 
proper. 

Documents  emanating  from  foreign  authorities  should  be  pre- 
sented bearing  the  signature  of  an  authorized  official  legalized 
by  the  legation  or  consulate  of  the  Republic  in  the  country  of 
its  origin,  and  that  of  the  Consul  or  Minister  legalized  by  the 
Ministry  of  Foreign  Relations. 

In  order  that  foreign  marks  may  enjoy  the  guarantees  which 
this  law  accords,  they  must  be  registered  in  accordance  with  its 
provisions. 

The  owners  of  them  or  their  duly  authorized  agents  are  the 
only  ones  who  can  apply  for  registration. 

Documents^  Required. 

Power  of  attorney,  legalized  by  Uruguayan  Consul;  certified 
copy  of  original  registered  mark  in  the  country  where  the  pro- 
prietor of  the  mark  is  established,  legalized  by  the  Uruguayan 
Consul ;  ten  copies  of  the  mark. 

Assignments. 

The  cession  or  sale  of  a  business  includes  the  mark,  save  ex- 
press stipulation  to  the  contrary,  and  the  cesionaire  has  the  right 


URUGUAY  567 

to  use  the  mark,  even  if  it  be  nominal,  in  the  same  manner  as 
the  previous  owner,  without  other  limitations  than  those  ex- 
pressed in  the  agreement,  deed  of  sale  or  deed  of  cession  or 
surrender.  (Art.  8.) 

Applications  for  the  registration  of  an  assignment  of  a  mark 
shall  contain : 

(a)  The  name  and  address  of  the  assignor. 

(b)  The  name  and  address  of  the  assignee. 

(c)  The  number  and  title  of  the  mark. 

(d)  Proof  of  there  having  been  deposited  in  the  Gen- 
eral Treasury  the  fee  prescribed  by  law. 

(e)  The  original  document,  or  a  copy  of  same,  proving 
the  assignment. 

Fees. 

For  the  registration  and  certificate  of  the  mark,  whencesoever 
its  origin,  a  fee  of  $10  shall  be  levied.  The  same  fee  shall  be 
paid  for  registration  and  certificate  of  transfer.  For  copies  of 
certificates-  required  thereafter  the  charge  shall  be  $2,  besides 
the  value  of  the  stamped  paper  on  which  they  are  issued.  For 
the  registration  and  certificate  of  renewal  of  a  mark  a  fee  of 
$?.-,  shall  be  levied.  (Art.  26.) 

Manufacturing,   Commercial  and  Agricultural  Names. 

The  name  of  a  merchant  or  manufacturer,  or  of  a  firm,  or  the 
title  or  designation  of  a  house  or  establishment  which  deals  in 
determined  articles,  constitute  industrial  property  for  the  pur- 
poses of  this  law.  (Art.  28.) 

If  a  merchant  or  manufacturer  desires  to  engage  in  an  in- 
dustry already  carried  on  by  another  person  of  the  same  name 
or  with  the  same  conventional  designation,  he  shall  adopt  a  clear 
modification  which  shall  make  this  name  or  designation  visibly 
different  from  that  which  the  pre-existing  house  uses.  (Art. 
29.) 

If  the  party  injured  by  the  use  of  a  name  of  manufacture  or 
commerce,  or  of  the  mining,  agricultural  or  lumbering  indus- 
tries, does  not  make  any  complaint  within  the  term  of  two  years 
from  the  day  on  which  it  began  to  be  used  by  another,  he  shall 
lose  his  right  to  any  action.  (Art.  30.) 

Corporations  have  the  same  right  to  the  name  which  they 
bear  as  any  individual,  and  are  subject  to  the  same  limitations. 
(Art.  31.) 

The  right  to  the  exclusive  use  of  a  name  as  industrial  prop- 
erty shall  terminate  with  the  house  of  business  which  bears  it 
or  with  the  cessation  of  the  industry  to  which  it  belongs.  (Art. 
32.) 

The  registration  of  a  name  is  not  necessary  in  order  to  exer- 


568  URUGUAY 

cise  the  rights  accorded  by  this  law,  except  in  case  it  forms  a 
part  of  the  mark.     (Art.  33.) 

Penal  Provisions. 

He  who  for  the  purpose  of  gain  makes,  counterfeits,  alters 
or  executes  a  mark  registered  by  another  person  in  the  proper 
register,  shall,  upon  complaint,  be  punished  by  imprisonment 
'of  from  twelve  to  fifteen  months.  (Art.  34.) 

He  who  with  the  same  motive  imitates  a  mark  under  such 
conditions  that  the  consumer  could  confuse  same  with  products, 
the  marks  of  which  have  been  duly  registered,  shall,  upon  com- 
plaint, be  punished  by  imprisonment  of  from  nine  to  twelve 
months.  (Art.  35.) 

Those  who  refill  with  spurious  products  receptacles  bearing 
the  mark  of  another,  or  those  who  refill  them  with  products 
which  do  not  correspond  to  the  genuine  product  mentioned  in 
the  mark  which  the  receptacle  bears,  or  those  who  mix  genuine 
products  with  others  extracted  or  spurious,  shall  be  punished 
upon  complaint,  with  imprisonment  from  six  to  nine  months. 
(Art.  36.) 

He  who  knowingly  sells  or  places  on  sale,  or  offers  to  sell 
or  distribute  merchandise  marked  with  the  marks  to  which  the 
preceding  article  refers,  shall  be  punished  upon  complaint,  with 
imprisonment  of  from  six  to  nine  months.  (Art.  37.) 

Those,  who  against  the  wish  of  the  legitimate  owner,  use  or 
place  genuine  marks  on  sale,  shall  be  punished,  upon  complaint, 
by  a  fine  of  from  one  hundred  to  two  hundred  pesos.  (Art.  38.) 

Those  who  sell  or  place  on  sale  merchandise  with  a  misap- 
propriate or  counterfeit  mark  are  obliged  to  give  to  the  mer- 
chant or  manufacturer  who  is  the  owner  of  them  complete  in- 
formation in  writing  in  regard  to  the  name  and  address  of 
those  from  whom  the  merchandise  has  been  purchased  or  pro- 
cured, also  in  regard  to  the  time  when  the  sale  commenced,  and 
in  case  of  refusal  they  may  be  legally  compelled  under  penalty 
of  being  considered  accomplices  of  the  guilty  party.  (Art.  39.) 

Merchandise  bearing  counterfeited  mark  which  is  found  in 
the  possession  of  the  counterfeiter  or  his  agents,  shall  be  con- 
fiscated and  sold,  and  the  proceeds,  after  the  expenses  and  in- 
demnities established  by  this  law  have  been  paid,  shall  be  ap- 
propriated to  the  benefit  of  the  public  schools  of  the  Department 
in  which  the  confiscation  took  place.  (Art.  40.) 

Counterfeit  marks  which  are  found  in  possession  of  the  coun- 
terfeiter or  his  agents  shall  be  destroyed,  as  also  the  instruments 
which  served  especially  for  the  counterfeiting.  (Art.  41.) 

Those  injured  through  the  violation  of  the  provisions  of  this 
law  may  bring  an  action  for  damages  against  the  authors  of 
the  fraud  and  their  accomplices. 


URUGUAY  569 

The  sentence  shall  be  published  at  the  expense  of  the  in- 
f ringer.  (Art.  42.) 

No  action,  civil  or  criminal,  may  be  brought  after  three  years 
have  elapsed  since  the  commission  or  repetition  of  the  offense, 
or  after  one  year  from  the  day  on  which  the  owner  of  the  mark 
had  cognizance  of  the  fact  for  the  first  time.  The  acts  which 
disturb  this  provision  are  those  which  are  determined  by  the 
common  law.  (Art.  43.) 

The  provisions  contained  in  the  Articles  of  this  Chapter  shall 
be  applicable  to  those  who  unlawfully  make  use  of  the  name  of  a 
merchant,  manufacturer,  or  of  a  firm,  of  the  sign  or  designation 
of  a  commercial  or  manufacturing  house,  as  established  in  Arti- 
cles 28,  29,  30,  31,  32  and  33  of  this  law.  (Art.  44.) 

The  provisions  contained  in  the  penal  code  shall  be  applicable 
to  the  offenses  to  which  this  law  refers,  provided  that  they  do 
not  conflict  with  what  is  expressly  established  by  this  law.  (Art. 
45.) 

Procedure. 

Every  owner  of  a  manufacturing,  commercial  or  agricultural 
mark  to  whose  knowledge  it  may  come  that  there  are  to  be 
found  in  the  custom  house,  postoffice,  or  other  government  or 
private  office,  labels,  capsules,  receptacles  or  any  other  article 
similar  to  those  which  constitute  or  belong  to  his  mark,  may 
apply  to  the  competent  authority,  asking  for  an  attachment  on 
the  said  articles,  and  the  court  shall  grant  the  request  on  the 
responsibility  of  the  petitioner  and  such  security  as  he  shall 
deem  necessary  in  case  the  attachment  should  have  been  granted 
wrongfully. 

It  is  optional  with  the  judge  to  dispense  with  the  security 
when  the  applicant  is  a  person  of  well  known  responsibility. 
(Art.  46.) 

Without  prejudice  to  what  is  laid  down  in  the  preceding  arti- 
cle of  this  law  and  other  measures  which  may  be  taken  in  the 
criminal  court,  the  owners  of  the  misappropriated,  counterfeited 
or  imitated  marks  may,  upon  their  own  responsibility,  apply  to 
the  competent  judges,  asking  that  an  inventory  and  description 
be  taken  of  the  merchandise  or  products  which  are  found  bear- 
ing said  marks,  in  a  house  of  business  or  any  other  place.  The 
said  inventory  shall  be  taken  by  the  constable  of  the  court  or 
by  any  public  notary  whom  the  court  shall  name,  by  drawing 
up  documents  which  shall  contain  a  detailed  description  of  the 
merchandise  or  products,  and  which  shall  'be  signed  by  the  peti- 
tioner if  he  be  present,  the  constable  or  notary,  as  the  case  may 
be,  and  by  the  proprietor  of  the  business  or  store,  or  in  his 
absence,  by  two  witnesses.  (Art.  47.) 

When  several  inventories  have  to  be  made,  simultaneously  in 
different  places  the  judge  may  appoint  for  this  purpose  any  pub- 


570  URUGUAY 

lie  notary  and  in  all  cases  direct,  if  he  shall  believe  it  necessary, 
that  there  shall  accompany  the  constable,  or  his  substitute,  an 
expert,  in  order  that  he  may  supervise  the  description  of  the 
inventoried  merchandise.  (Art.  48.) 

If,  during  the  taking  of  the  inventory,  the  explanations  pro- 
vided for  by  Art.  39  of  this  law  are  given,  they  shall  be  included 
in  the  document.  (Art.  49.) 

In  order  that  the  order  for  the  inventory  and  attachment  of 
which  the  preceding  articles  treat  may  be  given,  the  presenta- 
tion of  the  certificate  of  the  mark  is  required.  (Art.  50.) 

Fifteen  days  having  elapsed  from  the  effecting  of  the  attach- 
ment, the  same  shall  be  without  effect  if  the  owner  of  the  mark 
has  not  instituted  the  proper  action.  (Art.  51.) 

The  proceedings  to  which  the  offenses  named  in  Art.  34,  and 
those  following  of  this  law  give  rise,  shall  be  conducted  accord- 
ing to  the  procedure  laid  down  by  the  code  of  criminal  pro- 
cedure. (Art.  52.) 

Criminal  actions  may  not  be  officially  instituted,  and  belong 
solely  to  the  interested  parties,  but  once  initiated  they  shall  be 
continued  by  the  Government  Attorney  if  he  thinks  it  proper. 
(Art.  53.) 

The  parties  injured  by  violation  of  the  provisions  of  this  law 
may  bring  an  action  for  damages  against  the  authors  and  ac- 
complices of  the  fraud. 

The  sentences  shall  be  published  at  the  expense  of  the  in- 
fringer.  (Art.  54.) 

Classification. 
Same  as  in  Argentine. 

Law  in  Force  in  Uruguay  to  Prevent  the  Sale  or  Importation 
of  Goods  Bearing  a  False  Indication  of  Origin. 

No  legislation  is  in  force  prohibiting  false  indications  of  origin 
nor  are  importers  held  legally  responsible  for  the  correctness  of 
indications  of  origin  on  imported  goods.  It  is  thought,  how- 
ever, that  if  a  merchant  sold  goods  falsely  marked  as  of  U.  S. 
origin,  the  purchaser  could  claim  damages  under  the  Civil  Code. 
The  legal  procedure  would  be  expensive  and  protracted. 

Marking  Goods:  "Marca  de  Fabrica,"  (M.  F.)  ;  and  "Marca 
de  Comercio,"  (M.  C.) 

Trade  Mark  Lazv. 

Under  date  of  July  13,  1909,  a  new  trade  mark  statute  was 
enacted  by  the  Congress  of  Uruguay  which  has  now  become 
operative  there.  This  statute  makes  important  changes  in  the 
trade  mark  law  of  that  Republic. 

The  law   excludes   from   registration  the  names  or  coats  of 


URUGUAY  571 

arms  in  use  by  the  state  or  any  municipality,  names  and  coats 
of  arms  of  foreign  countries,  unless  authorized,  the  form  or 
color  of  the  articles,  descriptive  terms,  terms  in  common  use  as 
applied  to  the  articles,  marks  which  tend  to  ridicule  ideas,  per- 
sons, or  objects  worthy  of  respect,  names  of  living  persons  with- 
out their  consent  or  of  deceased  persons  without  the  consent  of 
their  next  of  kin,  words  similar  to  a  commercial  name  known 
in  connection  with  the  same  products,  and  words  which  indicate 
an  intention  to  unfairly  compete  with  any  existing  business. 
The  exclusive  right  to  the  use  of  a  mark  and  the  right  to  punish 
the  use  thereof  by  another  is  dependent  upon  registration.  How- 
ever, prior  use  of  a  mark,  whether  foreign  or  domestic,  within 
the  country  is  sufficient  to  sustain  an  opposition  to  the  registra- 
tion of  the  mark  by  another,  or  to  justify  the  cancellation  of  such 
unauthorized  registration  if  effected.  A  proceeding  for  cancella- 
tion must,  however,  be  brought  within  two  years,  after  which 
time  the  registration  becomes  conclusive.  The  term  of  regis- 
tration is  ten  years.  If  a  mark  be  allowed  to  lapse,  it  can  be 
re-registered  within  two  years  of  its  expiration  only  by  the 
original  registrant  or  by  his  legal  representatives. 

The  application  for  registration  is  published  in  the  official 
daily  paper  for  fifteen  consecutive  days  and  when  ten  days  shall 
have  elapsed  after  the  last  publication,  if  no  opposition  is  filed, 
the  mark  is  passed  to  registration. 

Commercial  names,  names  of  houses,  firms  or  establishments 
are  protected  without  registration  and  another  person  of  the 
same  name  desiring  to  carry  on  business  must  use  his  name 
with  such  modification  as  will  make  it  visibly  distinct  from  that 
of  the  previous  user.  Any  complaint  upon  this  score,  however, 
must  be  made  by  the  party  wronged  within  two  years,  other- 
wise his  right  is  barred.  The  names  of  corporations  are  pro- 
tected in  the  same  way  as  those  of  individuals. 

Counterfeiting  of  a  registered  trade  mark  is  punished  by  im- 
prisonment of  from  twelve  to  fifteen  months.  The  refilling  with 
spurious  goods  of  receptacles  bearing  trade  marks,  or  the  adul- 
teration of  goods  sold  under  trade  marks,  is  punishable  by  im- 
prisonment of  from  six  to  nine  months.  The  sale  of  such  goods 
with  knowledge  of  their  character  is  similarly  punished. 

Merchandise  bearing  counterfeit  marks  is  subject  to  be  con- 
fiscated and  sold  for  the  benefit  of  the  public  schools  of  the  de- 
partment where  found. 

Any  action,  civil  or  criminal,  must  be  brought  within  three 
years  after  the  commission  of  the  offense,  or  within  one  year 
from  the  time  that  it  becomes  known  to  the  party  wronged. 

Criminal  proceedings  must  be  instituted  by  the  party  wronged 
and  will  not  be  undertaken  officially,  but  once  initiated  they  may 
be  continued  by  the  government  prosecutor. 


572  URUGUAY 

The  Status  of  Trade  Marks. 

The  reports  of  the  Chamber  of  Commerce  of  Montevideo  for 
the  years  1909  and  1910,  show  several  cases  of  a  notable  char- 
acter. Application  being  made  for  the  registration  of  a  trade 
mark  consisting  of  the  figure  of  a  crescent,  the  word  "Crescent" 
and  the  representation  of  several  stars,  an  opposition  was  filed 
by  a  firm  of  earlier  registrants  who  maintained  that  the  mark 
applied  for  would  be  confused  with  their  own  already  registered, 
and  described  as  consisting  of  the  reoresentation  of  one  or  sev- 
eral stars,  shown  in  any  form  which  they  might  desire  to  adopt. 
The  Chamber  of  Commerce  advises  that  the  registration  in  ques- 
tion, conceding  to  the  firm  the  right  to  use  their  mark  in  the 
form  of  a  single  star,  or  of  several  stars,  with  or  without  addi- 
tional symbols,  as  they  might  see  fit,  is  not  in  accordance  with 
the  terms  of  the  law,  because  the  law  requires  the  deposit  in  the 
registration  office  of  a  representation  of  the  mark  as  used.  This 
representation  is  intended  for  purposes  of  evidence,  in  contro- 
versies over  the  right  to  the  mark,  and  the  registration  should 
be  limited  to  the  mark  as  used  and  should  be  in  accordance  with 
the  representation  of  the  mark  filed  in  the  office.  No  right 
should  be  conceded  to  use  the  mark  with  additions  or  modifica- 
tions that  may  suit  the  convenience  of  the  registrant,  but  any 
substantial  modification  of  form  made  in  the  use  of  a  registered 
mark  should  be  considered  as  depriving  it  of  the  protection  of 
the  law. 

In  the  present  case,  the  Chamber  of  Commerce  was,  however, 
of  the  opinion  that  no  confusion  could  arise  between  the  mark 
applied  for,  in  which  the  crescent  and  the  name  "Crescent" 
were  the  prominent  features,  and  the  mark  of  the  opponent.  This 
view  was  adopted  by  the  department,  which  dismissed  the  oppo- 
sition and  granted  registration  of  the  applicant's  mark.  (Mac- 
Gregor,  Aitken  &  Co. 'vs.  Ashworth  &  Co.,  Annual  Report  of 
the  Chamber  of  Commerce,  Montevideo,  1910,  p.  26.) 

An  application  of  the  Borden's  Condensed  Milk  Co.,  for  the 
registration  of  its  "Eagle"  trade  mark  in  Uruguay,  was  opposed 
by  a  local  dealer  who  had,  some  thirty  years  back,  registered  a 
like  trade  naark  for  foods  and  beverages  and  other  articles.  In 
considering  the  case,  the  Chamber  of  Commerce  was  evidently 
largely  influenced  by  the  fact  that  no  condensed  milk  under  the 
trade  mark  of  the  local  dealer  was  now  on  the  market  and  the 
opposition  seemed  intended  rather  to  prevent  the  registration  by 
the  Borden  Company  than  to  avoid  confusion  between  the  op- 
ponent's goods  and  those  of  the  applicant. 

The  discussion  of  this  case  develops  the  difference  between 
a  mark  of  manufacture  (marca  de  fabrica)  and  a  mark  of  com- 
merce (marca  de  comercio)  as  usually  recognized  in  the  laws 
and  practice  of  the  Spanish-American  countries.  The  distinction 


URUGUAY  573 

between  a  mark  of  manufacture  and  a  mark  of  commerce,  is  thus 
defined:  the  former  is  applied  to  the  article  by  the  maker,  while 
the  latter  is  applied  by  the  dealer  who  handles  the  article.  Ac- 
cordingly, one  product  may  bear  both  the  mark  of  the  manufac- 
turer and  that  of  the  dealer,  the  latter  being  in  the  nature  of  a 
new  mark  or  countersign  added  to  the  original  mark,  whereby 
the  dealer  himself  guarantees  the  authenticity  and  quality  of 
the  product  he  sells. 

The  condensed  milk  of  the  applicant  is  a  foreign  product.  It 
comes  upon  the  market  bearing  an  insignia  of  origin,  to  which 
the  dealer  may  add  a  mark  of  his  own.  The  consumer  will  be 
guided  by  the  trade  mark  upon  the  goods,  but  will  buy  the 
product  in  the  establishment  whose  commercial  mark  gives  him 
confidence  that  the  article  is  genuine.  Consequently,  no  damage 
can  result  to  the  opposing  dealer  from  the  registration  sought, 
because  the  presence  of  his  commercial  mark  upon  another  brand 
of  condensed  milk  would  not  cause  it  to  be  taken  for  the  Borden 
brand,  and  if  it  did  the  dealer  could  not  be  damaged.  By  decree 
of  May  10,  1910,  the  registration  was  ordered  to  proceed.  (Bor- 
den's  Condensed  Milk  .Co.,  vs.  Puga,  Report,  1910,  p.  28.) 

That  clause  of  the  present  trade  mark  law  of  Uruguay  mak- 
ing the  rights  of  the  prior  user  subordinate  to  those  of  the  reg- 
istrant, after  the  expiration  of  two  years  from  the  date  of  regis- 
tration of  the  trade  marks,  has  received  a  construction  from  the 
Chamber  of  Commerce,  that  has  been  sanctioned  by  the  action  of 
the  government.  The  firm  of  Martin  &  Co.  registered  the  trade 
mark  "Dulcuria"  on  October  3,  1907.  Recently  a  Chilian  house 
applied  for  the  registration  of  the  same  mark,  which  was  op- 
posed. Thereupon  the  Chilian  house,  in  its  turn,  sought  to  pro- 
cure the  cancellation  of  the  mark  registered,  upon  the  ground 
of  priority  of  use.  It  was  claimed  that  although  the  mark  had 
stood  on  the  register  for  more  than  two  years,  the  provision  of 
the  law  affixing  a  two  year  period  of  limitation  did  not  have  a 
retroactive  effect,  and  inasmuch  as  two  years  had  not  elapsed 
since  the  law  went  into  effect,  the  right  to  cancel  the  mark  had 
not  been  lost.  This  position,  although  it  appears  to  be  a  very 
reasonable  one,  did  not  commend  itself  to  the  Chamber  of  Com- 
merce, nor  to  the  government,  who  were  of  the  opinion  that 
the  right  to  cancel  the  registered  mark  had  been  lost  by  the 
lapse  of  the  period  fixed  by  the  statute.  The  effect  of  such  a 
principle  manifestly  is,  that  any  trade  mark  registered  more  than 
two  years  before  the  act  was  passed,  however,  open  to  attack 
before,  became  by  the  passage  of  the  act  invulnerable.  (Weir 
Scott  &  Co.  vs.  Martin  &  Co.,  Report,  1910.  p.  31.) 

A  mark  consisting  of  a  single  triangle  is  held  not  to  conflict 
in  any  way  with  another  trade  mark  consisting  of  two  triangles, 
so  placed,  one  upon  the  other,  as  to  form  a  six-pointed  star. 
The  opinion  of  the  Chamber  points  out  that  when  words  or 


574  URUGUAY 

names  are  in  question,  they  should  be  so  dissimilar  in  sound  and 
significance  that  a  purchaser  who  is  unable  to  read  could,  never- 
theless, distinguish  them  one  from  the  other;  but  in  the  case  of 
geometrical  figures  which  could  be  readily  recognized  by  anyone^ 
the  mere  presence  of  the  triangle  in  the  two  did  not  constitute 
them  infringements  one  of  the  other. 

It  was  argued  in  this  case  that  since,  according  to  the  law  of 
Uruguay,  a  mark  to  be  valid  must  be  of  a  novel  and  fanciful 
character,  the  mark  applied  for,  the  representation  of  a  six- 
pointed  star,  would  not  be  a  good  trade  mark.  The  Chamber 
of  Commerce,  however,  points  out  that  absolute  novelty  is  not 
required,  but  only  novelty  in  respect  of  the  goods  to  .which  the 
mark  is  applied.  Hence,  the  commonest  names  or  devices  may 
form  trade  marks.  The  only  novelty  necessary  is  that  they  be 
not  previously  used  as  trade  marks  in  the  same  industry. 
(Brandes  &  Co.  vs.  Clericetti  Bros.  &  Barella,  Report,  1910, 
p.  33.) 

A  Spanish  firm  undertook  to  procure  the  registration  of  its 
trade  mark  upon  presentation  of  a  certificate  showing  that  they 
were  established  in  business  in  a  city  of  Spain,  but  offered  no 
proof  of  registration  of  the  mark  in  Spain.  The  Chamber  of 
Commerce  says  that  under  the  law  of  Uruguay  this  is  not  per- 
mitted. The  law  requires  the  certificate  of  registration  in  the 
country  of  origin  as  evidence  of  ownership  of  the  mark,  and  this 
requirement  can  not  be  dispensed  with. 

It  was  argued  that  a  foreign  house  might  wish  to  register  a 
mark  for  the  Uruguay  trade,  without  intending  to  use  it  at  home, 
and,  therefore,  registration  at  home  should  not  be  required.  The 
Chamber  of  Commerce,  however,  is  of  the  opinion  that  even  in 
such  a  case,  the  mark  should  be  registered  at  home,  since  the 
protection  accorded  to  a  foreign  trade  mark  in  Uruguay  is 
nothing  more  than  the  extension  of  the  protection  granted  at 
home,  and  the  foreign  applicant,  as  a  condition  of  registration 
will  be  required  to  show  that  his  mark  is  in  fact  protected  in 
his  own  country.  (In  re  Commellas  &  Cluett,  Report,  1910,  p. 
36.) 

An  application  was  made  to  register  a  trade  mark,  consisting 
of  the  words  "Crema  Helada,"  or  'Ice  Cream,"  for  goods  in 
several  different  classes,  including  pharmaceutical  and  toilet 
preparations.  The  registry  officer  refused  to  register  the  mark, 
considering  that  it  was  not  properly  registrable  for  goods  of  this 
character,  but  as  so  applied  was  an  absurdity.  The  Chamber 
of  Commerce  points  out  that  the  apparent  absurdity  of  the  mark 
is  the  thing  which  makes  it  a  fanciful  mark,  and,  therefore,  a 
good  trade  mark  and  that  there  is  no  reason  why  a  single  mark 
should  not  serve  to  distinguish  any  number  of  different  prod- 
ucts, however  diverse  in  character.  The  only  purpose  of  a  trade 
mark  is  to  distinguish  the  article  to  which  it  is  applied  from  other 


URUGUAY  575 

articles  of  different  origin,  and  this  purpose  is  best  accomplished 
by  a  mark  that  is  fanciful  and  arbitrary.  (Re  O'Shanahan  & 
Co.,  Report,  1910,  p.  39.) 

The  widow  of  one  Francisco  Bech,  who  by  her  remarriage  had 
acquired  the  name  of  Casabo,  registered  in  1909,  the  name 
"Bech"  as  a  trade  mark  for  cigarette  papers.  Thereafter,  one 
Jaime  Bech  applied  for  the  registration  of  his  full  name  for  the 
same  goods.  This  was  opposed  by  the  first  registrant,  she  claim- 
ing that  by  registering  the  name  "Bech"  she  had  acquired  a 
right  to  the  exclusive  use  thereof.  The  applicant  on  the  other 
hand,  sought  the  cancellation  of  the  registration  made  by  the 
widow,  maintaining  that,  having  remarried,  she  no  longer  en- 
joyed the  right  to  use  the  name.  The  Chamber  of  Commerce 
argued  that,  so  far  as  concerns  the  rights  of  the  widow,  the  use 
of  the  trade  name  is  a  necessary  incident  of  succession  to  owner- 
ship of  the  business.  When  a  commercial  name  forms  part  of  a 
mark  and  indicates  a  place  of  business,  this  can  pass  by  suc- 
cession and  the  one  acquiring  the  business  acquires  the  right  to 
use  the  commercial  name.  However,  she  should  not  be  allowed 
to  use  the  name  of  her  husband,  except  with  the  prefix  of  his 
first  name,  Francisco,  and  the  Chamber  recommends  that  the 
mark  registered  should  be  amended  in  that  particular. 

As  to  the  application  of  the  later  party,  it  is  pointed  out  that 
the  registration  should  .be  allowed,  since  the  mark  is  different 
from  the  one  already  registered,  except  for  the  common  presence 
therein  of  the  name  "Bech,"  and  consists  only  of  the  applicant's 
name. 

The  decree  of  the  Minister  of  Industry,  of  March  13,  1911, 
admits  to  registration  the  mark  applied  for,  but  directs  the 
cancellation  of  the  opponent's  mark,  because  not  the  name  of  the 
applicant,  and  not  otherwise  entitled  to  registration  unde,r  the 
trade  mark  act.  (Maria  de  Casabo  vs.  Jaime  Bech,  Report, 
1910,  p.  43.) 

That  in  the  case  of  two  marks,  dissimilar  in  appearance  and 
makeup,  but  embodying  the  same  or  similar  names,  the  resem- 
blance in  the  names  is  sufficient  to  cause  a  conflict  between  the 
marks,  is  pointed  out  in  another  opinion  of  the  Chamber  of 
Commerce.  The  two  marks  or  labels  in  controversy  contained, 
respectively,  the  designation  "Pajarito"  and  "La  Pajarita."  It 
would  be  easy,  it  is  said,  for  these  to  be  confused  by  the  public, 
since  the  words  would  give  the  common  designation  to  the  prod- 
uct in  either  case,  and  the  difference  between  them,  being  merely 
the  difference  between  the  masculine  and  feminine  forms  of  the 
noun,  would  be  insufficient  to  distinguish  them.  This  view  was 
accented  by  the  minister  of  industry  and  registration  of  the  latter 
mark  refused  by  decree  of  Feb.  11,  1911.  (Reim  &  Co.  vs.  Car- 
lisle Croker  &  Co.,  Report,  1910,  p.  45.) 

The  proprietor  of  a  drug  store,  who  uses  the  representation 


576  URUGUAY 

of  a  lion  as  a  trade  name  or  sign  for  his  business,  can  not  oppose 
the  registration  of  the  like  symbol  as  a  trade  mark  for  pharma- 
ceutical products.  In  an  opinion  rendered  upon  this  question, 
the  Chamber  of  Commerce  maintains  that  pharmaceutical  prod- 
ucts manufactured  and  sold  under  the  mark  applied  for,  could 
not  possibly  be  confused  with  similar  products,  sold  from  the 
place  of  business  of  the  opponent.  The  use  of  a  trade  mark  and 
that  of  a  mere  sign  are  quite  different,  the  one  being  intended 
to  distinguish  the  products  of  an  industry  or  objects  of  com- 
merce, while  the  other  is  meant  merely  to  identify  a  place  of 
business.  The  title  to  the  latter  is  acquired  by  use,  without  the 
necessity  of  registration,  whereas  the  former  must  be  registered 
in  order  that  the  full  title  thereto  may  be  vested  in  the  user. 
The  right  to  a  trade  mark  is  absolute  throughout  the  entire 
country,  while  that  to  a  sign  is  limited  to  the  city  or  district 
where  it  is  used  and  in  which  the  trade  connected  therewith  is 
located.  (Sueiro  vs.  Lucius  &  Bruning,  Report,  1909,  p.  65.) 

The  word  "Tubular,"  is  not  properly  registrable  as  a  trade 
mark  for  machinery,  for  the  reason  that  it  is  a  generic  term,  and 
no  word  denoting  quality,  class,  form,  color,  number,  descrip- 
tion, origin  or  constituents  of  a  thing  can  serve  as  a  trade  mark. 
(Re  Cooper,  1909,  p.  70.) 

A  mark  for  mineral  water  having  been  registered,  consisting 
of  the  words  "Carbri  Roa,"  applied  to  a  natural  water  of  Spain, 
a  later  application  for  the  same  mark  for  beverages,  waters  and 
effervescent  waters,  with  the  exceptions  of  mineral  waters,  should 
not  be  allowed.  The  question  is,  whether  registration  of  a  mark 
should  be  allowed  to  distinguish  an  artificial  product,  after  the 
registration  of  a  like  mark  for  a  natural  product  of  the  same 
character. 

It  is  pointed  out  that  the  laws  of  most  countries  give  an  ex- 
clusive right  of  property  in  the  name  of  a  mineral  spring,  to 
the  owner  thereof  and  an  exclusive  right  to  owners  of  springs 
located  in  a  particular  locality  to  make  use  of  the  name  of  that 
locality.  Only  the  owner  of  such  a  spring  should  have  authority 
to  use  the  name  as  a  trade  mark  for  artificial  waters.  To  allow 
the  registration  of  the  mark  applied  for  would  make  easy  con- 
fusion of  the  products,  to  the  prejudice  of  the  consumer  and  the 
owner  of  the  registered  mark.  The  minister  of  industry,  by  de- 
cree of  June  18,  1909,  refused  the  registration.  (Barbon  vs. 
Echegaray,  Report,  1909,  p.  72.) 

Application  being  made  by  a  firm  in  Buenos  Aires,  for  the 
registration  of  the  word  "Continental."  to  distinguish  a  variety 
of  articles  among  others  typewriters,  a  local  firm  dealing  in  a 
machine  of  foreign  origin  under  that  name,  opposed  the  regis- 
tration, in  so  far  as  it  related  to  typewriters.  The  Chamber  of 
Commerce  says  that  the  name  "Continental"  although  it  has  not 
been  registered  by  the  foreign  house,  the  owner  of  the  mark,  who 


URUGUAY  577 

has  apparently  been  remiss  and  indifferent  in  the  matter,  is, 
nevertheless,  known  in  the  community  as  a  foreign  mark.  It 
distinguishes  a  certain  typewriter,  and  nobody  should  be  allowed 
to  register  it,  except  the  maker  thereof.  The  rip-lit  of  property 
in  a  foreign  trade  mark  is  as  much  entitled  to  consideration  as 
that  in  a  domestic  mark.  The  opinion  was  rendered,  therefore, 
that  the  mark  should  not  be  registered  for  typewriters,  but  the 
government,  taking  the  contrary  view,  permitted  the  registra- 
tion for  all  the  goods  in  connection  with  which  the  application 
was  made.  (Berger  &  Co.  vs.'  Coates  &  Co.,  1909,  p.  75.) 

The  title  to  a  trade  mark  registered  under  the  law  of  Uruguay 
continues  throughout  the  period  for  which  registration  is  made, 
irrespective  of  whether  or  not  the  use  of  trie  mark  continues. 
This  is  the  view  of  the  Chamber  of  Commerce,  in  a  case  arising 
from  the  attempt  of  an  applicant  to  show  abandonment  of  a  pre- 
viously registered  trade  mark.  It  was  in  evidence  that  the  reg- 
istrant of  the  earlier  mark  was  out  of  business  and  could  not 
be  located.  Nevertheless,  the  Chamber  of  Commerce  advised 
that  only  the  expiration  of  the  period  of  registration  and  the 
failure  to  renew  could  divest  the  registrant  of  the  title  to  the 
mark.  (Bayley  &  Co.  vs.  Escudero,  1909,  p.  90.) 

With  respect  to  an  application  made  by  the  British  minister 
for  an  extension  of  time  to  British  subjects  to  oppose  applica- 
tions for  registration  of  trade  marks  under  the  law  of  Uruguay, 
the  Chamber  of  Commerce  points  out  that  even  if  the  statutory 
period  allowed  for  oppositions  is  very  short,  and  much  less  than 
under  the  laws  of  some  other  countries,  still  the  British  owners 
of  trade  marks  interested  are  not,  in  reality,  prejudiced  because 
the  statute  gives  to  them  the  period  of  two  years  within  which 
they  may  bring  proceedings  for  cancellation  of  a  registered 
trade  mark  and  this  proceeding  is  quite  similar  in  the  evidence 
required  and  in  the  expense  involved,  to  the  proceeding  of  op- 
position. Hence,  no  apparently  sufficient  reason  exists  for  grant- 
ing the  extension  of  time  requested.  (Report,  1909,  p.  92.) 

While  the  form  of  a  receptacle  can  not  in  itself  properly  con- 
stitute a  trade  mark,  nevertheless  taken  in  connection  with  other 
elements,  as,  for  example,  labels  used  thereon,  a  good  trade 
mark  may  result.  The  registration  of -a  mark  so  constituted  does 
not  concede  to  the  firm  mentioned  the  exclusive  right  to  use  such 
a  receptacle,  but  only  to  use  it  in  connection  with  the  other  ele- 
ments forming  part  of  the  mark.  (Re  Bagley  &  Co.,  Ltd.,  De- 
cree, Nov.  26,  1910.) 

Two  marks  are  not  necessarily -in  conflict  because  they  con- 
tain a  single  common  element.  Application  being  made  for  the 
registration  of  a  mark  consisting  of  a  shield,  having  in  the  center 
the  letter  S  and  above  it  an  eagle  in  the  act  of  flying,  opposition 
was  filed  by  the  owner  of  another  mark,  embodying  among 
other  things  the  representation  of  an  eagle.  It  was  held  by  the 

37 


578  URUGUAY 

minister  of  industry,  by  decree  of  May  14,  1910,  that  the  presence 
of  a  common  element  in  the  two  marks  is  not  enough  to  prevent 
the  registration  sought,  taken  in  connection  with  the  fact  that 
the  differences  between  the  two  marks  as  a  whole,  are  such  as  to 
avoid  any  possibility  of  confusion  between  them.  (Alcock  & 
Co.  vs.  Clausen  &  Co.,  Decree,  May  14,  1910.) 

An  application  was  made  for  the  registration  of  a  trade  mark 
for  anises,-  consisting  of  a  certain  form  of  bottle  in  which  they 
were  placed  upon  the  market.  The  applicant  represented  that 
he  wished  to  use  different  labels  upon  the  bottle,  without  regis- 
tering each  label  the  bottle  bore,  and  considered  it  more  eco- 
nomical and  practical  to  register  the  bottle.  The  Chamber  ad- 
vises that  it  be  not  registered,  because  it  is  not  in  any  way  new 
or  unusual  in  form,  apparently  not  having  arrived  at  the  opin- 
ion, which  it  adopted  a  year  later,  that  such  a  trade  mark  was 
not  properly  registrable  in  any  case.  (Re  Bosch  &  Costa,  Re- 
port, 1910,  p.  85.) 

Application  was  made  for  the  registration  of  a  trade  mark  for 
certain  textiles,  consisting  of  the  representation  of  an  electric 
cutting  machine.  The  Registrar  rejected  the  mark,  believing 
that  no  exclusive  right  should  be  given  to  use  as  a  trade  mark 
the  representation  of  a  machine  employed  for  the  production  of 
the  article  to  which  the  mark  is  applied.  The  Chamber  of  Com- 
merce, however,  points  out  that  the  Registrar  is  in  error.  It  is 
true  that  the  representation  of  a  bottle  or  other  container  can 
not  serve  as  a  trade  mark  for  the  contents  thereof,  nor  could  the 
representation  of  a  machine  serve  as  a  trade  mark  for  the  ma- 
chine itself.  Thus  the  manufacturer  of  sewing  machines  could 
not  adopt  as  a  trade  mark  the  representation  of  a  sewing  ma- 
chine, because  the  mark,  in  that  case,  would  be  in  the  nature  of 
the  necessary  or  generic  name  of  the  article,  graphically  repre- 
sented. On  the  other  hand,  that  mark  might  be  a  perfectly  valid 
trade  mark  for  goods  in  another  and  different  line,  because,  as 
so  used,  it  would  be  distinctive.  Under  the  circumstances,  the 
mark  applied  for  was,  in  the  opinion  of  the  Chamber  of  Com- 
merce, properly  registrable.  (Re  Tuso  &  Co.,  Report,  1910, 
p.  41.) 

The  arms  of  a  foreign  state  may  not  be  registered.  Therefore, 
a  'mark  showing  the  representation  of  a  double  eagle,  a  part  of 
the  Austrian  coat  of  arms,  cannot  be  registered  without  proof 
that  the  use  thereof  is  authorized  by  the  state  interested.  (Re 
Bendorp  &  Co.,  Decree,  February  4,  1911.) 

The  inscription  "Honi  Soit  Qui  Mai  y  Pense"  appearing  upon 
the  coat  of  arms  of  Great  Britain  may  not  be  made  part  of  a 
registered  trade  mark  without  proof  of  the  right  derived  from 
the  British  government  to  use  the  inscription  in  question.  (Bar- 
clay &  Co.  vs.  Iriart,  Decree,  February  18,  1911.) 


VENEZUELA  579 


VENEZUELA 

This  Republic  is  situated  at  the  extreme  north  of  the  South 
American  continent,  being  bounded  on  the  north  by  the  Caribbean 
Sea  and  the  Atlantic  Ocean,  on  the  south  by  the  Republic  of 
Brazil,  on  the  west  by  Colombia,  and  on  the  east  by  British  Guiana. 
The  area  is  about  364,000  square  miles  and  the  population  is  esti- 
mated at  about  2,685,700. 

The  size  and  natural  wealth  of  Venezuela  are  not  generally 
realized.  Its  greatest  length  is  calculated  as  being  nearly  1,000 
miles  and  its  greatest  width  about  800  miles.  Its  coast  line  is 
estimated  at  about  2,000  miles,  with  numerous  harbors.  Much 
of  its  area  is  cultivatable  land,  and  parts  of  it  are  extraordinarily 
fertile. 

Venezuela  is  probably  the  richest  Republic  of  South  America 
as  regards  natural  resources  and  the  easy  means  of  developing 
them,  being  traversed  in  every  direction  by  rivers,  tributaries  of 
the  Orinoco,  which  connect  it  with  the  Amazon.  The  country 
is  principally  agricultural,  the  products  being  coffee  and  cocoa ; 
also  sugar  cane,  bananas,  cotton,  indigo,  cocoa  nuts,  Indian 
corn,  etc.  There  are  also  vast  plains  where  the  breeding  of 
cattle  is  carried  on  to  a  great  extent,  for  the  sake  of  their  hides, 
which  are  exported.  Rubber,  copaiba  and  other  articles  of  value 
are  produced. 

Venezuela's  mineral  wealth  is  as  yet  practically  untouched  and 
apparently  as  inexhaustible.  There  is  hardly  a  mineral  which 
is  not  found  here ;  iron,  gold,  petroleum,  silver,  copper,  lead,  etc., 
are  found  in  every  direction.  The  working  of  these  mines  ought, 
under  improved  conditions,  among  which  may  be  mentioned 
those  of  land  traffic  and  transit,  to  add  greatly  to  the  wealth  of 
the  country. 

Venezuela  is  already  provided  with  a  magnificent  water  sys- 
tem in  the  rivers  of  the  Orinoco  and  its  458  tributaries  and  the 
Apure.  and  when  once  these  great  natural  arteries  are  supple- 
mented by  feeders  in  the  form  of  roads,  a  new  era  of  prosperity 
should  dawn  for  the  country. 

MONEY — The  bolivar=9  3/5d.  (divided  into  100  centimes)  = 
19  cents  U.  S. 

\YKIGHTS  AND  MEASURES — The  metric  system. 

Law. 
Law  May  18,  1877. 

Duration. 

The  exclusive  right  for  the  use  of  all  trade  or  commerce  marks 
registered  and  certified  shall  be  in  complete  legal  force  for  a 
term  of  thirty  years,  to  be  reckoned  from  the  4ate  it  was  regis- 


580  VENEZUELA 

tered,  with  the  exception  of  the  case  when  the  mark  covers 
articles  manufactured  abroad,  and  in  which  the  same  mark  is 
protected,  according  to  the  law  of  a  foreign  country,  for  a  shorter 
period ;  then  the  mark  registered  by  virtue  of  this  law  shall  cease 
to  enjoy  the  official  protection  which  it  grants  at  the  same  time 
when  protection  granted  by  the  foreign  law  ceases. 

Renewal. 

During  six  months  prior  to  the  expiration  of  the  term  of 
thirty  years  the  petitioner  can  ask  for  the  renewal  of  the  registry 
of  any  trade  or  commerce  mark,  and  this  shall  be  granted  under 
the  same  conditions  as  when  first  given,  in  a  title  written  on  sealed 
paper  of  the  same  class  as  formerly.  The  duration  of.  this  regis- 
tration shall  be  for  thirty  years,  as  in  the  first  case. 

Who  May  Register. 

Any  person  or  company  domiciled  in  the  Republic,  and  any 
corporation  created  by  national  authority  or  by  the  Federal 
States  or  Territories,  as  well  as  any  person,  company  or  cor- 
poration domiciled  in  a  foreign  country  in  which,  by  virtue  of  a 
treaty  or  agreement,  Venezuelans  have  the  same  or  analogous 
rights  as  those  granted  by  this  law,  can  obtain  protection  or 
guaranty  covering  any  legitimate  trade  or  commerce  mark  for 
the  use  of  which  an  exclusive  right  has  been  granted,  or  the 
adoption  or  use  of  which  is  desired  for  this  purpose,  provided 
the  requirements  of  the  present  law  have  been  complied  with. 
(Art.  1.) 

Requirements. 

Power  of  attorney  legalized  by  the  Venezuelan  consul;  certi- 
fied copy  of  original  registered  mark,  legalized  by  Venezuelan 
consul;  6  facsimiles  of  the  mark. 

Mode  of  Application. 

Any  person  desiring  to  obtain  official  protection  for  a  trade 
or  commerce  mark,  shall  file  before  the  Minister  of  Fomento 
a  petition  on  sealed  paper  of  the  seventh  class,  expressing  the 
name  of  the  interested  person,  his  residence  and  business  domi- 
cile; the  kind  of  article  or  merchandise  covered  or  intended  to 
be  covered  by  the  trade  or  commerce  mark,  the  peculiar  descrip- 
tion of  the  articles  or  objects  included  in  the  class  covered  or 
intended  to  be  covered  by  the  trade  mark ;  a  description  of  the 
same,  with  facsimiles,  in  which  can  be  seen  its  application  and 
use,  and,  finally,  the  time  during  which  the  trade  mark  has  al- 
ready been  in  use,  in  case  that  it  should  not  be  the  first  time 
that  its  use  or  application  is  petitioned  for. 


VENEZUELA  581 

Said  petition  shall  be  signed  by  the  interested  person,  or  by 
the  person  representing  him,  provided  he  can  show  a  power  of 
attorney  in  due  form  from  the  owner  or  owners  of  the  trade 
mark,  also  stating  in  writing  that  the  person  petitioning  for  the 
trade  or  commerce  mark  has  the  right  to  use  it,  and  that  said, 
trade  mark  does  not  resemble  any  other  analogous  one  already 
registered,  so  that  it  could  not  be  mistaken  for  it  and  thus  deceive 
the  public.  The  interested  party  shall  also  assert  that  the  afore- 
said description  or  facsimiles  which  are  to  be  registered  in  the 
corresponding  book  are  exact  copies  of  the  trade  mark  for  which 
protection  is  asked. 

The  Minister  of  Fomento  can  not  receive  or  register  a  trade 
or  commerce  mark  which  is  not  and  can  never  be  a  lawful  mark, 
or  which  is  merely  the  name  of  a  person,  company  or  corpora- 
tion not  accompanied  by  a  mark  sufficient  to  distinguish  it  from 
the  same  name  when  used  by  another  person,  or  that  the  mark 
be  equal  to  another  covering  the  same  class  of  objects  and  be- 
longing to  another  person,  or  that  the  said  mark  be  registered 
or  presented  to  be  registered,  or  that  it  be  so  much  like  the  last- 
mentioned  trade  mark  that  it  can  be  easily  mistaken  for  it  and 
thus  deceive  the  public. 

When  any  trade  or  commerce  mark  "is  submitted  to  the  De- 
partment of  Fomento  to  obtain  the  protection  which  this  law 
grants,  the  date  of  submittal  shall  be  recorded  and  registered, 
and  copies  of  the  trade  mark,  with  the  date  of  its  presentation 
and  of  the  petition  addressed  to  the  Minister  of  Fomento,  sealed 
with  seal  of  the  department  and  certified  by  the  Minister,  shall 
be  considered  sufficient  proof  in  case  a  controversy  should  arise 
as  to  priority  for  the  use  of  the  trade  mark. 

When  the  established  provisions  have  been  complied  with,  the 
National  Executive,  through  the  Department  of  Fomento,  shall 
issue  to  the  interested  party,  provided  there  be  no  opposition 
from  a  third  party,  a  certificate  in  national  sealed  paper  of  the 
third  class,  which  the  interested  party  is  to  provide,  in  which  it 
shall  be  declared  that  said  person  is  the  proprietor  of  the  trade 
or  commerce  mark  registered  with  all  its  specifications.  Said 
certificate,  which  shall  be  sufficient  title  for  the  Registrar,  shall 
be  signed  by  the  Minister  of  Fomento  and  sealed  with  the  seal 
of  the  Ministry. 

Infringements. 

No  person  can  legally  claim  the  exclusive  right  to  a  trade 
mark  which  is  used  or  intended  for  use  in  unlawful  trade  or  for 
an  object  noxious  in  itself,  or  for  a  trade  mark  which  has  been 
obtained  by  fraud,  or  which  has  been  formed  or  used  with  a 
view  of  deceiving  the  public  when  buying  or  selling  any  mer- 
chandise. 

Any  person  endeavoring  to  obtain,  personally  or  through  some 


582  VENEZUELA 

one  else,  the  registration  of  any  trade  or  commerce  mark,  or  who 
may  petition  the  Fomento  Department  for  anything  which  bears 
on  this  subject,  by  means  of  false  or  fraudulent  representations 
or  declarations  in  words  or  writing,  or  by  any  other  fraudulent 
means,  shall  be  subject  to  the  penalties  established  by  the  crimi- 
nal code,  notwithstanding  which  the  third  party  has  always  the 
right  of  claim  for  damages. 

Any  person  found  reproducing,  imitating  or  copying  a  regis- 
tered trade  mark,  or  using  it  on  any  merchandise  containing  the 
same  properties  and  qualities  as  those  described  in  the  registry, 
is  held  answerable  before  the  court  for  the  damages  caused  by 
the  illegal  use  of  such  mark  without  being  held  free  in  cases  of 
fraud  from  suffering  the  penalties  established  by  the  criminal 
code. 

Assignments. 

Trade  marks  are  at  all  times  transferable  independently  of 
the  business  for  which  they  are  used. 

Law  in  Force  in  Venezuela  to  Prevent  the  Sale  or  Importation 
of  Goods  Bearing  a  False  Indication  of  Origin. 

No  law  is  in  force  to  prevent  the  importation  and  sale  of 
goods  bearing  a  false  indication  of  origin.  The  importation  and 
offering  for  sale  of  goods  falsely  marked  with  trade  mark  reg- 
istered in  Venezuela  are  prohibited  by  law.  Any  purchaser  of 
goods  thus  marked  may  bring  a  criminal  action  against  their 
vender.  The  cost  of  bringing  such  an  action  is  from  $75  to 
$100.00. 

Marking  Goods:  "Marca  Registrada." 

Proprietary  Remedies. 

A  measure  promulgated  by  the  Minister  of  Hacienda,  places 
in  force  a  regulation  of  the  Association  of  Physicians  of 
Venezuela,  whereby  sales  of  secret  or  patent  medicines,  unless 
formally  recognized  in  Venezuela,  are  to  be  prohibited,  although 
they  may  have  the  approval  of  foreign  medical  faculties.  Failure 
to  meet  the  requirements  will  subject  the  offenders  to  the  pen- 
alties of  the  law.  A  permanent  commission  has  been  appointed 
to  examine  and  classify  secret,  or  patented  medicines.  Every 
manufacturer  wishing  to  sell  medicinal  preparations  in  Venezuela 
must  make  a  statement,  in  legal  form,  setting  forth:  (1)  The 
name  of  the  remedy,  (2)  the  full  formula,  and  (3)  the  dose  pre- 
scribed. Two  samples,  accompanied  by  the  foregoing  partic- 
ulars, shall  be  submitted  to  the  commission.  The  manufacturer 
may  appoint  by  letter,  if  necessary,  a  local  representative  to 
treat  with  the  commission.  For  each  certificate  permitting  the 
sale  of  a  medicine,  a  tax  of  $3.86  must  be  paid. 


ZANZIBAR  583 

Four  months  will  be  allowed  foreign,  and  two  months  domestic 
manufacturers,  in  which  to  comply  with  these  requirements. 
When  this  time  is  concluded  the  custom  houses  will  place  for 
two  months,  importations  of  the  kind  in  Class  5  of  the  tariff, 
paying  a  higher  duty,  during  which  period  the  preparations  may 
still  be  brought  before  the  commission.  After  this  they  will  be 
put  on  the  list  of  prohibited  articles.  The  custom  houses  will 
continue  their  examination  and  appraisement,  as  heretofore. 
New,  secret,  or  patent  medicines,  compounded  after  the  termina- 
tion of  the  time  given,  may  be  submitted  for  examination  upon 
fulfilling  the  requisite  formalities.  All  preparations  allowed  sale 
will  bear  an  authoritative  inscription  to  that  effect  on  the  wrap- 
pers. 

The  address  of  the  commission,  which  will  examine  samples 
within  five  days  after  presentation,  is :  Junta  de  Examen  y  Clas- 
sificacion  de  Medicinas  Secretas  y  de  Patente,  Caracas. 


ZANZIBAR 

The  dominions  of  the  Sultan  of  Zanzibar  formerly  comprised, 
in  addition  to  the  islands  of  Zanzibar  and  Pemba  territories,  ex- 
tending some  600  miles  along  the  coast  of  the  mainland  as  far 
north  as  Warsheikh  and  south  of  Tunghi  Bay  and  indefinitely 
inland,  together  with  the  adjacent  islands.  In  1886  a  commis- 
sion of  the  three  powers  (Great  Britain.  France  and  Germany) 
marked  out  the  western  boundaries  of  the  territory  on  the  main- 
land, which  may  be  stated  as  extending  10  miles  inland  from 
the  sea.  Since  the  cession  of  the  coast  line  from  Rovuma  to 
Vanga,  including  the  Island  of  Mafia,  to  Germany  in  1890,  the 
territory  is  bounded  on  the  south  by  the  boundary  line  betwreen 
the  British  and  German  territories  in  East  Africa,  which  extends 
in  a  northwesterly  direction  from  the  north  bank  of  the  mouth 
of  the  River  Umba  to  where  the  first  parallel  of  north  latitude 
reaches  Lake  Victoria.  The  strip  is  under  the  nominal  suzer- 
ainty of  the  Sultan  of  Zanzibar,  but  is  administered  by  the  Gov- 
ernor of  British  East  Africa. 

It  was  officially  notified  on  November  4,  1890,  that  by  agree- 
ment with  the  Sultan  of  Zanzibar  the  dominions  of  His  Highness 
were  placed  under  the  protection  of  His  Britannic  Majesty. 

The  Island  of  Zanzibar  is  about  60  miles  in  length,  and  has 
an  area  of  640  square  miles.  The  town  is  situated  on  the  west 
of  the  island,  and  is  the  principal  place  of  trade ;  the  population 
of  the  island  is  estimated  at  about  200,000,  and  of  the  town 
about  65,000.  Foremost  among  the  products  of  the  islands  of 
Zanzibar  and  Pemba  stand  cloves,  amounting  to  about  four-fifths 
of  the  crop  of  the  whole  world,  next  to  which  comes  Copra.  The 


584  ZANZIBAR 

imports  consist  principally  of  cotton  goods,  petroleum,  rice  and 
foodstuffs. 

MONEY — 1  rupee  (100  cents)=l  s.  4  d.=32  cents  U.  S. 

WEIGHTS  AND  MEASURES — Same  as  Great  Britain,  with  the 
following  exception — the  gisla  (measure  of  caff  re  corn)  360  Ibs. 
avoirdupois. 

Law, 

Trade  marks  can  only  be  accepted  for  registration  in  Zanzibar 
if  they  are  registered  in  Great  Britain  under  the  Patent  Designs 
and  Trade  Marks  Acts,  or  if  they  have  been  protected  in  accord- 
ance with  the  law  in  any  British  possession  or  foreign  state,  to 
which  the  provisions  of  Sec.  103  of  the  Act  of  1883  have  been, 
bv  order  in  council,  made  amicable. 

Any  act  which,  if  done  in  British  India,  would  be  an  offense 
against  the  law  at  the  time  being  in  force  in  British  India  relating 
to  trade  marks,  etc.,  shall,  if  done  in  Zanzibar  by  a  person  subject 
to  the  Order  in  Council  relating  to  Zanzibar,  be  punished  by 
imprisonment. 

Requirements. 

Power  of  attorney;  certified  copy  of  British  registration;  six 
copies  of  the  mark;  one  electrotype.  (Forms  for  application  may 
be  obtained  from  B.  Singer's  Offices.) 


REQUIREMENTS 

ARGENTINE 

Spanish  power  of  attorney,  legalized  by  the  Argentine  Consul ; 
14  facsimiles  of  the  mark;  1  electrotype;  Spanish  description  of 
the  mark,  in  duplicate ;  if  it  consists  of  a  picture  or  an  emblem, 
it  must  indicate  the  class  to  which  it  is  applied  and  whether  it 
applies  to  products  of  manufacture,  or  of  the  soil,  or  to  objects 
of  commerce. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

AUSTRALIA 

Power  of  attorney ;  1  electrotype,  not  exceeding  two  inches 
square ;  12  facscimiles  of  the  mark. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

AUSTRIA 

Certified  copy  of  home  registration;  power  of  attorney;  30 
facsimiles  of  the  mark;  2  electrotypes. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

BAHAMA   ISLANDS 

Power  of  attorney,  legalized ;  application ;  6  copies  of  the  mark. 
(Form   for   application    may   be   obtained    from   B.    Singer's 
offices.) 

BARBADOS 

Power  of  attorney ;  8  copies  of  the  mark ;  1  electrotype. 
(Form   for   application    may   be   obtained    from   B.    Singer's 
offices.) 

BELGIUM 

Power  of  attorney  (see  Form  No.  3,  B.  Singer's  book  of 
forms)  ;  6  facsimiles  of  the  mark ;  1  electrotype. 

BERMUDA 

Application  signed  by  the  applicant,  no  legalization  required; 
3  facsimiles  of  the  mark,  one  to  be  fixed  within  the  blank  space 
left  in  the  application  and  the  two  others  on  separate  sheets  of 
foolscap  of  same  size ;  power  of  attorney  signed  by  the  applicant, 
no  legalization  required. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

585 


586  REQUIREMENTS 

BOLIVIA 

Power  of  attorney,  legalized  by  the  Bolivian  Consul  (see  Form 
No.  1,  B.  Singer's  book  of  forms)  ;  6  facsimiles  of  the  mark. 
The  dimensions  and  colors  used  in  every  mark  that  consists  of 
labels  or  typical  designs  must  be  given. 

BRAZIL 

Power  of  attorney  (see  Form  No.  5,  B.  Singer's  book  of 
forms),  legalized  by  a  Brazilian  Consul;  10  copies  of  each  mark; 
full  description  of  each  mark,  with  claims  and  indications  of 
goods ;  home  registration,  legalized  by  Brazilian  Consul. 

When  the  owner  of  a  trade  mark  applies  for  registration  of  a 
trade  mark  not  registered  in  the  home  country  he  must  file  the 
following  documents:  Power  of  attorney,  legalized  by  the 
Brazilian  Consul;  certificate  from  the  Patent  office  showing  that 
the  trade  mark  has  not  been  registered;  document  showing  that 
applicant  has  commercial  or  industrial  establishment  in  the  coun- 
try where  he  resides;  10  copies  of  the  mark.  All  documents 
must  be  legalized  by  the  Brazilian  Consul. 

BRITISH    GUIANA 

Power  of  attorney,  legalized ;  a  certificate  of  home  registra- 
tion verified  by  affidavit  or  statutory  declaration  of  the  proprie- 
tor ;  3  copies  of  the  mark ;  1  electrotype.  Affidavits  and  statutory 
declarations  must  be  sworn  to  before  a  notary  public  in  the 
United  Kingdom  or  before  a  British  Consul  in  foreign  countries. 

(Forms  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

BRITISH   HONDURAS 

Power  of  attorney;  a  certificate  of  home  registration  verified 
by  affidavit  or  statutory  declaration  of  the  proprietor;  3  copies 
of  the  mark;  1  electrotype. 

(Forms  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

BRITISH    CENTRAL   AFRICA    PROTECTORATE 

Power  of  attorney;  6  copies  of  the  mark;  1  electrotype  or 
wood  cut. 

(Forms  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

BRITISH    EAST   AFRICA 

Power  of  attorney ;  4  copies  of  the  mark ;  certified  copy  of  the 
British  registration. 


REQUIREMENTS  587 

(Forms  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

BRITISH    NORTH    BORNEO 

Power  of  attorney ;  6  facsimiles  of  the  mark ;  1  electrotype. 
(Forms    for   application   may  be   obtained   from   B.   Singer's 
offices.) 

BULGARIA 

Power  of  attorney,  legalized  by  a  Bulgarian  Consul  or  U.  S. 
Department  of  State ;  certificate  of  home  registry,  legalized ;  8 
facsimiles  of  the  mark ;  1  electrotype. 

(Forms  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

CANADA 

Power  of  attorney;  application  in  duplicate;  description  of 
mark,  stating  whether  it  is  intended  for  use  as  a  general  or 
specific  one ;  4  copies  of  the  mark. 

(Forms  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

CAPE   PROVINCE 

Power  of  attorney,  legalized  ;  application  ;  declaration,  legalized 
by  British  Consul;  G  copies  of  the  mark;  1  electrotype. 

(Forms  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

CEYLON 

Power  of  attorney;  6  copies  of  the  mark;  1  electrotype  or 
wood  cut. 

(Forms  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

CHANNEL   ISLANDS 

Trade  marks  may  be  protected  in  Jersey  and  Guernsey  by  en- 
tering a  certificate  of  registration  in  Great  Britain  in  the  rolls 
of  the  Royal  Courts. 

CHILE 

Power  of  attorney,  legalized  by  Chilean  Consul ;  7  copies  of 
the  mark. 

(Forms  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

COLOMBIA 

Power  of  attorney,  legalized  by  Colombian  Consul ;  certified 
copy  of  home  registration ;  10  copies  of  the  mark. 

(Forms  for  application  may  be  obtained  from  B.  Singer's 
offices.) 


588  REQUIREMENTS 

CONGO    FREE   STATE 

Power  of  attorney ;  6  facsimiles  of  the  mark ;  1  electrotype. 
(Forms   for  application   may   be   obtained   from   B.    Singer's 
offices.) 

COSTA    RICA 

Power  of  attorney,  legalized  by  Costa  Rican  Consul;  8  copies 
of  the  mark ;  1  electrotype. 

(Forms  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

CRETE 

Power  of  attorney ;  2  facsimiles  of  the  mark ;  1  electrotype. 
(Forms    for  application   may   be   obtained    from   B.    Singer's 
offices. ) 

CUBA 

Power  of  attorney,  legalized ;  certified  copy  of  the  home  trade 
mark,  legalized  by  Cuban  Minister  or  Consul;  15  facsimiles  of 
the  mark. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

CURACAO 

Power  of  attorney,  no  legalization.  One  power  suffices  for 
several  applications  filed  at  the  same  time.  Ten  copies  of  the 
mark;  electrotype,  measuring  in  length  and  width  not  under  1.5 
cm.  and  not  exceed  10  cm.,  and  of  a  depth  exactly  24  mm. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

CYPRUS 

Power  of  attorney;  G  copies  of  the  mark;  1  electrotype  or 
wood  cut. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

DANISH    WEST    INDIES 

Power  of  attorney,  legalized  by  Danish  Consul;  official  copy 
of  the  registry  in  Denmark ;  1  electrotype ;  5  copies  of  the  mark. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

DENMARK 

Power  of  attorney  (see  Form  No.  8,  B.  Singer's  book  of 
forms),  legalized;  3  copies  of  the  mark;  2  electrotypes  or  wood 
cuts ;  certified  copy  of  home  registration. 


REQUIREMENTS  589 

DOMINICAN   REPUBLIC 

Power  of  attorney,  legalized;  certified  copy,  legalized;  4  fac- 
similes of  the  mark. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

DUTCH   EAST   INDIES 

Power  of  attorney,  no  legalization;  10  copies  of  the  mark; 
electrotype,  measuring  in  length  and  width  not  under  1.5  cm.  and 
not  exceeding  10  cm. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

ECUADOR 

Power  of  attorney,  signed  before  two  witnesses  and  Consul; 
25  facsimiles  of  the  mark;  1  electrotype  of  the  mark,  the  length 
and  breadth  of  which  must  not  be  less  than  15  mm.  (5/8  inch) 
nor  more  than  100  mm.  (3  15/16  inch),  height  20  mm.  (13/16 
inch)  to  30  mm.  (1  3/16  inch)  ;  a  receipt  proving  the  payment 
of  the  prescribed  fee ;  a  consent  in  writing,  if  the  mark  consists 
of  the  name  or  portrait  of  an  individual. 

(Form  for  application  may  be'  obtained  from  B.  Singer's 
offices.) 

EGYPT 

Power  of  attorney ;  certified  copy  of  home  registration ;  1  elec- 
trotype ;  6  facsimiles  of  the  mark ;  name  and  address  of  the  ap- 
plicant; also  statement  of  the  goods  for  which  the  trade  mark 
is  used. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

ERITREA 

Power  of  attorney  in  legal  form,  when  the  application  is  not 
presented  by  an  interested  party;  2  facsimiles  of  the  mark;  2 
copies  of  the  certificate  of  registration,  of  the  description,  if  there 
be  one,  and  of  the  declaration,  issued  by  the  Minister  of  Agri- 
culture, Industry  and  Commerce  of  the  Kingdom. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

FALKLAND    ISLANDS 

Power  of  attorney  and  6  copies  of  the  mark. 
(Form    for   application    may   be   obtained   from   B.    Singer's 
offices.) 

FIJI    ISLANDS 

Power  of  attorney ;  7  copies  of  the  mark ;  2  electrotypes. 
Application,  accompanied  by  representations  of  the  trade  marks, 
must  be  advertised  in  Gazette  and  newspaper. 


590  REQUIREMENTS 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

FINLAND 

Power  of  attorney,  legalized ;  certified  copy  of  home  registra- 
tion, not  legalized ;  2  copies  of  the  mark ;  2  electrotypes  or  wood 
cuts. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

FRANCE 

Power  of  attorney ;  3  facsimiles  of  the  mark ;  1  electrotype. 
(Form    for   application    may   be   obtained    from   B.    Singer's 
offices.) 

FRENCH  COLONIES  AND  PROTECTORATES 

Power  of  attorney ;  3  facsimiles  of  the  mark ;  1  electrotype. 
(Form    for   application    may   be   obtained    from    B.    Singer's 
offices.) 

GAMBIA 

Power  of  attorney;  3  facsimiles  of  the  mark;  full  statement 
,  of  the  goods  for  which  same  is  to  be  used,  as  well  as  applicant's 
address ;  1  electrotype. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

GERMANY 

Certified  copy  of  home  registration,  legalized  by  the  German 
Consul ;  power  of  attorney ;  5  copies  of  the  mark ;  1  electrotype. 

(Forms  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

GIBRALTAR 

Power  of  attorney ;  3  facsimiles  of  the  mark ;  statement  of  the 
goods  for  which  the  same  is  to  be  used,  as  well  as  applicant's 
address ;  1  electrotype. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

GOLD  COAST   COLONY 

Power  of  attorney;  3  copies  of  the  mark;  statement  of  the 
goods  for  which  same  is  to  be  used,  as  well  as  applicant's  ad- 
dress; 1  electrotype. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 


REQUIREMENTS  591 

GREECE    . 

Certified  copy  of  home  registration,  legalized  by  Greek  Consul ; 
power  of  attorney,  legalized;  3  copies  of  the  mark  and  a  metal 
typographic  block. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

GRENADA 

Power  of  attorney;  8  copies  of  the  mark;  1  electrotype  or 
wood  cut. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

GREAT   BRITAIN 

Power  of  attorney;  6  copies  of  the  mark;  1  electrotype  or 
wood  cut. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

GUATEMALA 

Power  of  attorney,  legalized ;  certified  copy  of  original  regis- 
tered trade  mark,  legalized ;  10  copies  of  the  mark ;  1  electrotype. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

HONDURAS 

Power  of  attorney,  legalized  by  Honduras  Consul ;  2  copies  of 
the  mark;  certified  copy  of  original  registered  mark,  legalized. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

HONG  KONG 

Power  of  attorney ;  application ;  declaration ;  6  copies  of  the 
mark;  1  electrotype. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

HUNGARY 

Power  of  attorney ;  certified  copy  of  home  registration ;  4  fac- 
similes of  the  mark;  2  electrotypes. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

ICELAND 

Power  of  attorney;  copy  of  the  Danish  trade  mark;  3  fac- 
similes of  the  mark ;  1  electrotype. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 


592  REQUIREMENTS 

INDIA 

Power  of  attorney,  legalized;  declaration;  G  copies  of  the 
mark;  1  electrotype. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

ITALY 

Power  of  attorney,  legalized ;  certified  copy  of  home  registra- 
tion, legalized  by  the  Italian  Consul ;  4  copies  of  the  mark. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

JAMAICA 

Power  of  attorney ;  application ;  where  trade  mark  is  registered 
in  Great  Britain,  a  certified  copy  of  the  British  registration ;  3 
facsimiles  of  the  mark ;  1  electrotype. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

JAPAN 

Power  of  attorney  (see  Form  No.  17,  B.  Singer's  book  of 
forms)  ;  certificate  of  nationality;  10  facsimiles  of  the  mark;  1 
electrotype. 

LEEWARD    ISLANDS 

Authorization ;  7  copies  of  the  mark ;  1  electrotype. 
(Form    for   application    may    be   obtained    from    B.    Singer's 
offices.) 

LIBERIA 

Power  of  attorney ;  description  of  the  goods ;  5  copies  of  the 
mark. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

LUXEMBOURG 

Power  of  attorney,  no  legalization  required ;  2  copies  of  the 
mark  on  detached  cardboard,  not  to  exceed  8  x  10  cm. ;  1  electro- 
type. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

MALTA   AND    GOZO 

Power  of  attorney ;  2  facsimiles  of  the  mark. 
(Form    for   application   may   be   obtained    from    B.    Singer's 
offices.) 

MAURITIUS 

Power  of  attorney ;  5  specimens  of  the  mark ;  3  electrotypes. 
(Form    for   application   may   be   obtained   from   B.    Singer's 
offices.) 


REQUIREMENTS  593 

MEXICO 

Power  of  attorney ;  petition ;  description  of  the  mark  with 
claims  in  triplicate;  15  facsimiles  of  the  mark;  1  electrotype. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

MONTENEGRO 

Power  of  attorney,  signed  by  the  applicant  and  legalized  by  a 
Consul;  6  facsimiles  of  the  mark;  1  electrotype  or  wood  cut. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

NATAL 

Power  of  attorney;  application;  6  facsimiles  of  the  mark;  1 
electrotype. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

NETHERLANDS  (HOLLAND) 

Power  of  attorney ;  6  copies  of  the  mark ;  if  colors  are  essen- 
tial to  mark  it  must  be  so  stated  and  10  extra  colored  copies 
supplied ;  1  electrotype. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

NEWFOUNDLAND 

Power  of  attorney ;  application ;  declaration,  legalized  by  Brit- 
ish Consul ;  6  copies  of  the  mark. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

NEW   ZEALAND 

Power  of  attorney;  application;  4  facsimiles  of  the  mark;  1 
electrotype  or  wood  cut  representing  the  mark  exactly  as  it  is 
required  to  be  registered. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

NICARAGUA 

Power  of  attorney,  legalized  and  authenticated  by  a  Nicaraguan 
Consul ;  1  electrotype  and  6  reproductions  of  the  same  on  thin 
paper. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

NORTHERN    NIGERIA 

Power  of  attorney ;  6  copies  of  the  mark ;  1  electrotype  or 
wood  cut. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

38 


594  REQUIREMENTS 

NORWAY 

Power  of  attorney ;  certified  copy  of  home  registration ;  11  fac- 
similes of  the  mark ;  1  electrotype. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

ORANGE   RIVER   COLONY 

Power  of  attorney ;  application  ;  affidavit ;  6  copies  of  the  mark ; 
1  electrotype. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

PANAMA 

Power  of  attorney,  legalized ;  10  copies  of  the  mark ;  1  electro- 
type; a  certified  copy  of  home  registration,  legalized. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

PARAGUAY 

Power  of  attorney,  legalized  by  Paraguayan  Consul ;  2  copies 
of  the  mark ;  1  electrotype. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

PERU 

Power  of  attorney,  attested  by  a  notary  public  and  legalized 
by  a  Peruvian  Consul ;  8  copies  of  the  mark ;  1  electrotype. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

PHILIPPINE    ISLANDS 

Power  of  attorney ;  1  drawing ;  letter  of  advice ;  statement  and 
declaration ;  5  facsimiles  of  the  mark. 

(Forms  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

PORTO    RICO 

Power  of  attorney;  6  facsimiles  of  the  mark;  1  drawing;  let- 
ter of  advice ;  statement  and  declaration. 

(Forms  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

PORTUGAL 

Power  of  attorney,  signed  by  the  applicant,  no  legalization 
necessary ;  6  copies  of  the  mark,  not  exceeding  10  cm.  square ;  1 
electrotype;  unlegalized  official  certificate  showing  registration 
in  the  applicant's  native  country. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 


REQUIREMENTS  595 

PORTUGUESE   COLONIES 

A  certificate  of  the  Portuguese  registration ;  power  of  attorney. 
(Form    for    application   may   be   obtained   from    B.    Singer's 
offices.) 

RHODESIA 

Power  of  attorney,  legalized ;  application ;  declaration,  legalized 
by  British  Consul ;  8  copies  of  the  mark  and  1  electrotype. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

ROUMANIA 

Power  of  attorney,  legalized  by  Roumanian  Consul ;  2  fac- 
similes of  the  marks;  statement  of  the  goods  to  which  the  mark 
belongs;  1  electrotype. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

RUSSIA 

Power  of  attorney  in  the  Russian  language,  legalized  by  a 
Russian  Consul ;  50  facsimiles  of  the  mark ;  a  certificate  of  reg- 
istration in  the  native  country,  legalized  by  Russian  Consul ;  a 
translation  of  the  same  which  must  be  translated  either  by  a  sworn 
Russian  translator  or  certified  by  a  Russian  Consul  as  correct. 

(Form  for  application .  may  be  obtained  from  B.  Singer's 
offices.) 

SALVADOR 

Power  of  attorney,  legalized;  20  copies  of  the  mark;  1  elfec- 
trotype. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

SANTO   DOMINGO 
See  Dominican  Republic. 

ST.  HELENA 

Power  of  attorney;  6  copies  of  the  mark;  1  electrotype  or 
wood  cut. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

ST.  LUCIA 

Power  of  attorney;  6  copies  of  the  mark;  1  electrotype  or 
wood  cut. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 


596  REQUIREMENTS 

ST.  VINCENT 

Power  of  attorney;  6  copies  of  the  mark;  1  electrotype  or 
wood  cut. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

SERVIA 

Power  of  attorney,  legalized  by  Servian  Consul ;  certified  copy 
of  home  registration,  legalized ;  6  copies  of  the  mark  and  a  sam- 
ple of  material  marked. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

SEYCHELLES 

Power  of  attorney ;  6  copies  of  the  mark ;  1  electrotype  or 
wood  cut. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

SIAM 

Power  of  attorney ;  certified  copy  of  home  registration ;  10 
facsimiles  of  the  mark,  to  be  divided  among  the  different  con- 
sulates. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

SOUTHERN  NIGERIA 

Power  of  attorney ;  6  facsimiles  of  the  mark ;  1  electrotype  or 
wood  cut. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

SPAIN 

Certified  copy  of  home  registration,  legalized  by  the  Spanish 
consul ;  power  of  attorney ;  5  facsimiles  of  the  mark ;  1  electro- 
type. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

STRAITS  SETTLEMENTS 

Power  of  attorney ;  certified  copy  of  British  registration ;  4 
copies  of  the  mark. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

SURINAM 

Power  of  attorney ;  10  copies  of  the  mark ;  1  electrotype. 
(Form    for   application    may   be    obtained    from    B.    Singer's 
offices.) 


REQUIREMENTS  597 

SWEDEN 

Power  of  attorney;  certified  copy  of  home  registration;  5 
copies  of  the  mark ;  2  electrotypes. 

(Forms  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

SWITZERLAND 

Power  of  attorney,  no  legalization  required ;  certified  copy  of 
home  registration ;  5  copies  of  the  mark ;  1  electrotype  or  wood 
cut;  declaration,  or  the  like,  verifying  applicant's  business,  must 
be  produced. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

TRANSVAAL 

Power  of  attorney ;  application ;  6  facsimiles  of  the  mark ;  1 
electrotype  or  wood  cut. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

TRINIDAD  AND  TOBAGO 

Power  of  attorney,  legalized ;  8  copies  of  the  mark ;  1  electro- 
type or  wood  cut. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

TUNIS 

Power  of  attorney,  legalized ;  3  copies  of  the  mark ;  1  electro- 
type. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

TURKEY 

Power  of  attorney,  legalized ;  6  facsimiles  of  the  mark ;  1 
electrotype  or  wood  cut. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

UNITED  STATES 

Power  of  attorney ;  petition  ;  statement ;  declaration  ;  appoint- 
ment of  representative ;  5  facsimiles  of  the  mark ;  certified  copy 
of  home  registration,  legalized  by  U.  S.  consul ;  1  drawing. 

(Forms  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

URUGUAY 

Power  of  attorney,  legalized  by  Uruguayan  consul ;  certificate 
of  regisration  in  the  country  of  origin,  legalized;  10  copies  of 
the  mark ;  1  electrotype  or  wood  cut. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 


598 


PRIORITY  OF  USE 


VENEZUELA 

Power  of  attorney,  legalized  by  a  Venezuelan  consul;  certified 
copy  of  original  registered  mark,  legalized  by  the  Venezuelan 
consul ;  G  facsmiles  of  the  mark. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 

ZANZIBAR 

Power  of  attorney ;  declaration ;  certified  copy  of  British  regis- 
tration; 6  copies  of  the  mark;  1  electrotype. 

(Form  for  application  may  be  obtained  from  B.  Singer's 
offices.) 


The  foregoing  requirements  are  those  of  the  various  Patent 
Offices  with  the  exception  of  the  facsimiles,  the  number  called 
for  having  been  increased  as  the  foreign  attorneys  generally  re- 
quire extra  copies  for  their  files.  In  several  countries  the 
requirements  as  to  facsimiles  have  been  changed. 

PRIORITY  OF  USE 

Registration  is  granted  to  the  first  user  in  the  following 
countries : 


Australia 

Austria 

Bahama  Islands 

Barbados 

Belgium 

Bermudas 

Bolivia    (registration   com- 
pulsory) 

British  Guiana 

British  Honduras 

British  Central  Africa 
Protectorate 

British  East  Africa 

British  North  Borneo 

Canada 

Cape  Province 

Ceylon 

Congo  Free  State 

Crete 

Cuba    (registration  compul- 
sory) 

Curacao 

Cyprus 

Danish  West  Indies 


Denmark 

Dutch 'East  Indies 
Ecuador 
Egypt 
Eritrea 

Falkland  Islands 
Fiji  Islands 
France 

French  Colonies  and  Pro- 
tectorates 
Gambia 

Gibraltar  , 

Gold  Coast  Colony 
Greece 
Grenada 
Great  Britain 
Hong  Kong 
^Hungary 
Iceland 
India 
Italy 
Japan 

Leeward  Islands 
Luxembourg 


MARKING  TRADE  MARKS  599 

Malta  and  Gozo  St.  Helena 

Mauritius  St.  Lucia 

Mexico  St.  Vincent 

Natal  Seychelles 

Netherlands  Siam 

Newfoundland  Southern  Nigeria 

New  Zealand  Spain 

Northern  Nigeria  Straits  Settlements 

Norway  Surinam 

Orange  River  Colony  Switzerland 

Panama  Transvaal 

Philippine  Islands  Trinidad  and  Tobago 

Porto  Rico  Tunis 

Rhodesia  Turkey 

Russia  United  States 

Salvador  Zanzibar 

In  Great  Britain  and  all  the  British  colonies  and  independencies, 
registration  is  granted  the  first  jffijgfi,  and  gives  absolute  title  after 
five  years,  if  not  sooner  removed. 

FIRST  APPLICANT 

Registration  is  granted  to  the  first  applicant  in  the  follow- 
ing countries: 

Argentine  Liberia 

Brazil  Montenegro 

Bulgaria  Nicaragua 

Chile  (rights  of  the  prior  Paraguay 

user  recognized)  Peru 

Colombia  Portugal 

Costa  Rica  Portuguese  Colonies 

Dominican  Republic  Roumania 

Finland  Servia 

Germany  Sweden 

Guatemala  Uruguay 

Honduras  Venezuela 

MARKING  TRADE  MARKS 

Argentine    "Marca   Registrada" 

Australia   "Registered  Trade  Mark" 

Austria "Schutzmarke" 

Bahama  Islands   "Registered  Trade  Mark" 

Barbados   "Registered  Trade  Mark" 

Belgium    "Marque  Deposee" 

Bermuda  Islands "Registered  Trade  Mark" 

Bolivia "Marca  Registrada" 

Brazil "Marca  Registada" 


600  MARKING  TRADE  MARKS 

British  Guiana "Registered  Trade  Mark" 

British  New  Guiana "Registered  Trade  Mark" 

British  North  Borneo "Registered  Trade  Mark" 

British  Honduras  "Registered  Trade  Mark" 

Bulgaria "Marque  Enregistree,"  or  abbreviation  "M.  E." 

Canada    "Registered  Trade  Mark" 

Cape  Province "Registered  Trade  Mark" 

Central  Africa  Protectorate "Registered  Trade  Mark" 

Ceylon   "Registered  Trade  Mark" 

Channel  Islands    "Registered  Trade  Mark" 

Chile "M.  C."  or  "M.  F." 

Colombia  "Marca  Registrada" 

Congo  Free  State "Marque  Deposee" 

Costa  Rica   "Marca  Registrada" 

Cuba "Marca  Registrada" 

Curacao   "Gedeponeerd  Fabrieksmerk" 

for  industrial  marks; 
"  Gedeponeerd  Handels- 
m  e  r  k  "  for  commercial 
marks ;  "Wettig  Gedepo- 
neerd" (most  generally 
used,  registered  in  ac- 
cordance with  the  Act) 

Cyprus   "Registered  Trade  Mark" 

Denmark "Indregistreret  Varemaerke" 

Dominican  Republic  (Santo  Domingo)  ..  ."Marca  Registrada" 

Dutch  East  Indies "Gedeponeerd  Fabrieksmerk" 

for  industrial  marks; 
"  Gedeponeerd  Handels- 
m  e  r  k  "  for  commercial 
marks ;  "Wettig  Gedepo- 
neerd" (most  generally 
used,  registered  in  ac- 
cordance with  the  Act) 

East  Africa  Protectorate "Registered  Trade  Mark" 

Ecuador    "Marca  Registrada" 

Egypt "Registered  Trade  Mark" 

Falkland   Islands    "Registered  Trade  Mark" 

Finland   "Varumarke" 

France    "Marque  Deposee" 

Fiji  Islands    "Registered  Trade  Mark" 

Germany "Eingetragene  Schutzmarke" 

Gambia    "Registered  Trade  Mark" 

Gibraltar  "Registered  Trade  Mark" 

Gold  Coast  Colony "Registered  Trade  Mark" 

Great  Britain "Registered  Trade  Mark" 

Greece   "Registered  Trade  Mark" 

(in  the  Greek  language) 


MARKING  TRADE  MARKS  60 1 

Grenada "Registered  Trade  Mark" 

Guatemala ."Marca  Registrada" 

Honduras    "Marca  Registrada" 

Hong  Kong  "Registered  Trade  Mark" 

Hungary "Vedejegy" 

Iceland "Indregistreret  Varemaerke" 

India "Registered  Trade  Mark" 

Italy "Marca  Depositata" 

Jamaica   "Registered  Trade  Mark" 

.Japan  "Registered  Trade  Mark" 

(in  Japanese) 

Leeward  Islands "Registered  Trade  Mark" 

Luxembourg "Marque  Deposee" 

Malta  and  Gozo "Registered  Trade  Mark" 

Mauritius    "Registered  Trade  Mark" 

Mexico   "Marca  Industrial  Registrada" 

or  "M.  Ind.  Rgtrda,"  used 
by  manufacturers,  indus- 
trialists, agriculturists, 
etc.,  with  number  and 
date  of  registration. 
*  "Marca  de  Comercio  Registrada" 
or  "M.  de  C.  Rgtrda," 
used  by  merchants,  with 
number  and  date  of  reg- 
istration. 

Montenegro    "Registered  Trade  Mark" 

(in  the  language  of  the  country) 

Natal    "Registered  Trade  Mark" 

New  Foundland "Registered  Trade  Mark" 

New  Zealand  . "Registered  Trade  Mark" 

Netherlands  (Holland)    "Gedeponeerd  Fabrieksmerk" 

for  industrial  marks; 
"  Gedeponeerd  Handels- 
m  e  r  k  "  for  commercial 
marks ;  "Wettig  Gedepo- 
neerd"mostgenerally  used 

Nicaragua  "Marca  Registrada" 

Northern  Nigeria   "Registered  Trade  Mark" 

Norway    "Registrert  Varemerke" 

Oman "Registered  Trade  Mark" 

Orange  River  Colony "Registered  Trade  Mark" 

Panama  "Marca  Registrada" 

Paraguay "Marca  Registrada" 

Peru "Marca  Registrada" 

Philippine  Islands "Registered  Trade  Mark" 

Porto  Rico "Registered  Trade  Mark" 

Portugal "Marca  Registada" 


602  FALSE  INDICATION  OF  ORIGIN 

Portuguese  Colonies "Marca  Registada" 

Rhodesia  "Registered  Trade  Mark" 

Russia    "Registered  Trade  Mark" 

(in  the  Russian  language) 

Roumania   "Registered  Trade  Mark" 

(in  Roumanian  language) 

San  Salvador  "Marca  Registrada" 

St.  Lucia "Registered  Trade  Mark" 

St.  Vincent "Registered  Trade  Mark" 

Servia "Registered  Trade  Mark" 

(in  Servian  language) 

Seychelles  Islands    "Registered  Trade  Mark" 

Siam   "Registered  Trade  Mark" 

Sierra  Leone   "Registered  Trade  Mark" 

Somaliland  Protectorate  "Registered  Trade  Mark" 

Southern  Nigeria "Registered  Trade  Mark" 

Spain    "Marca  Registrada" 

Straits  Settlements "Registered  Trade  Mark" 

Sudan  "Registered  Trade  Mark" 

Surinam "Gedeponeerd  Fabrieksmerk" 

for  industrial  marks; 
"  Gedeponeerd  Handels- 
m  e  r  k  "  for  commercial 
marks  ;  "Wettig  Gedepo- 
neerd" most  generally  used 

Sweden "Varumarke"  or  "Registreradt  Varumarke" 

Switzerland  "Schutzmarke"  or  "Marque  Deposee" 

Transvaal    "Registered  Trade  Mark" 

Trinidad "Registered  Trade  Mark" 

Tunis  "Marque  Deposee" 

Turkey "Marque  Deposee" 

or  "Registered  Trade  Mark"  in  Turkish  language 

Uruguay    "Marca  Registrada" 

United  States  of  America "Reg.  U.  S.  Pat.  Off." 

Venezuela "Marca  Registrada" 


Laws  in  Force  in  the  Principal  Foreign  Countries  to  Prevent 

the    Sale    or    Importation    of    Goods    Bearing 

a    False    Indication   of    Origin. 

ARGENTINE  REPUBLIC 

The  law  prohibits  the  application  to  goods  of  a  falsified 
or  fraudulently  imitated  trade  mark,  as  well  as  the  sale, 
placing  on  sale,  or  circulation  of  articles  bearing  such  marks. 
It  also  prohibits  the  application  to  goods  with  fraudulent 
intention  of  a  mark  containing  a  false  indication  of  origin, 
as  well  as  the  sale  or  placing  on  sale  of  goods  thus  marked. 


FALSE  INDICATION  OF  ORIGIN  603 

Trade  names  also  receive  protection.  In  cases  in  which  a  reg- 
istered trade  mark  is  involved  the  laws  appear  to  afford  ample 
protection  against  goods  bearing  a  false  indication  of  origin; 
otherwise  a  plaintiff  has  to  prove  that  he  has  suffered  loss  or 
damage  by  being  deceived  as  to  the  country  of  origin.  All 
goods  imported  have  to  be  accompanied  by  a  certificate  of 
origin  viseed  by  an  Argentine  consul,  but  the  penalty  for 
false  information  is  not  considered  sufficiently  stringent  to 
prevent  a  false  statement  as  to  origin.  There  are  no  require- 
ments as  to  the  marking  of  imported  goods  to  show  their 
country  or  place  of  origin  or  to  denote  that  they  are  foreign. 


AUSTRIA-HUNGARY 

AUSTRIA 

No  law  is  in  force  to  prevent  the  sale  or  importation  of 
goods  bearing  a  false  indication  of  United  States  or  other 
origin  except  in  the  case  of  hops.  Existing  laws  merely 
protect  trade  and  manufacture  marks  registered. 

HUNGARY 

The  law  in  force  affecting  the  matter  in  question  prohibits 
the  marking  of  goods  with  names  or  titles  falsely  indicating 
United  States  or  other  foreign  origin.  The  authorities  are 
bound  to  prosecute  if  such  offenses  are  brought  to  their  notice, 
either  by  foreign  governments  or  their  representatives,  or  by 
foreign  traders.  No  measures  are  in  force  to  prevent  the 
importation  of  goods  bearing  a  false  indication  of  origin. 
There  are  no  requirements  as  to  the  marking  of  imported 
goods  to  show  the  country  or  place  of  origin  or  to  denote 
that  they  are  foreign. 

BELGIUM 

No  special  laws  are  in  force  to  prevent  the  sale  or  impor- 
tation of  goods  bearing  false  indications  of  origin,  except 
those  which  merely  approve  the  Convention  of  Paris  of 
March  20,  1883,  as  modified  by  the  Arrangement  of  Madrid 
of  1891,  relating  to  the  international  registration  of  trade 
marks,  and  by  the  additional  act  of  Brussels  of  Decem- 
ber, 1900.  The  convention  of  1883  prohibits  the  importation 
of  goods  falsely  bearing  the  name  of  any  locality  as  indica- 
tion of  origin,  but  only  provided  that  such  indication  is  asso- 
ciated with  a  trade  name  of  a  fictitious  character  or  assumed 
with  fraudulent  intention.  Full  protection  is  given  by  law 
to  trade  marks  and  to  the  trade  names  of  manufacturers.  The 
public  prosecutor  possesses  the  sole  authority  to  enforce  the 


604  FALSE  INDICATION  OF  ORIGIN 

measures  of  the  convention,  but  parties  interested  may   re- 
quest him  to  take  steps  to  protect  their  rights. 

Although  there  is  no  special  law  on  the  matter,  by  bringing 
an  action  under  the  Civil  Code  before  commercial  courts,  mer- 
chants can  restrain  the  sale  of  any  goods  bearing  a  false  indi- 
cation of  origin  if  they  are  marked  with  the  name  of  a  town 
or  district  which  is  well  known  as  a  place  where  goods  of  that 
description  are  manufactured  or  produced.  Only  the  mer- 
chants or  manufacturers  of  the  place  in  question  could  bring 
such  an  action.  A  criminal  prosecution  can  also  be  brought 
by  a  purchaser  of  goods  if  he  can  prove  that  he  has  been 
deceived  as  to  their  origin  and  that  the  deception  has  caused 
him  damage.  For  infringement  of  his  trade  mark  or  trade 
name  a  manufacturer  could  obtain  redress  in  either  a  criminal 
or  commercial  court.  The  cost  of  a  criminal  case  is  practically 
nil,  except  the  lawyer's  fee.  In  a  commercial  case  the  costs 
for  service  of  writ  are  about  15  francs,  and  no  further  ex- 
penses have,  as  a  rule,  to  be  paid  except  a  proportional  duty 
on  damages  obtained  if  the  case  is  successful,  lawyer's  fees, 
and  the  costs  necessary  for  execution  of  judgment.  The  costs 
are  small  compared  with  those  of  United  States  or  English 
litigation. 

BRAZIL 

The  laws  in  force  prohibit  the  sale,  but  not  the  importation 
of  goods  bearing  a  false  indication  of  origin.  However,  the 
importation  of  such  goods  can  also  be  prevented  since  any 
manufacturer  or  trader  in  similar  articles,  established  in  the 
place  purporting  to  be  the  place  of  origin  of  the  imported 
goods,  can  have  them  seized  and  detained.  The  falsification 
and  imitation  of  registered  trade  marks  and  the  sale  or  expo- 
sition for  sale  of  goods  bearing  falsified  or  imitated  registered 
trade  marks  are  punishable  offenses.  Foreigners  receive  this 
protection  for  trade  marks  registered  in  their  country  if  their 
state  grants  reciprocal  treatment  to  Brazilian  trade  marks 
or  if  it  belongs  to  the  Industrial  Property  Union.  It  is  not 
in  the  power  of  representatives  of  foreign  governments  to 
take  steps  to  enforce  the  laws.  To  take  legal  proceedings 
the  party  must  be  interested,  i.  e.,  a  manufacturer  or  trader. 
The  customs  authorities  can  seize  imported  goods  if  theit  ori- 
gin is  suspicious,  though  in  view  of  the  stringency  of  the 
customs  regulations,  which  require  the  origin  of  all  articles 
to  be  stated  in  the  consular  invoices  (which  must  accompany 
all  imported  goods),  false  declarations  should  be  extremely 
difficult.  Beyond  those  already  mentioned,  no  special,  steps 
are  taken  to  prevent  the  importation  of  goods  bearing  a  false 
indication  of  origin.  No  requirements  are  in  force  as  to  the 
marking  of  imported  goods  to  show  the  place  of  origin. 


FALSE  INDICATION  OF  ORIGIN  605 

BULGARIA 

The  law  does  not  protect  buyers  against  goods  bearing 
false  indications  of  origin,  but  it  prohibits  the  importation 
and  sale  or  exposure  for  sale  of  goods  bearing  the  imitation 
of  a  trade  mark  previously  registered  in  Bulgaria.  The  Min- 
istry of  Commerce  and  Agriculture  attend  to  the  strict  appl'- 
cation  of  the  law,  and  the  customs  authorities  are  charged 
with  its  execution.  Representatives  of  foreign  powers  look 
after  the  protection  of  the  interests  of  their  own  subjects,  but 
their  co-operation  only  consists  in  accelerating  the  legal  pro- 
cedure. The  cost  of  prosecution  is  not  likely  to  be  very 
heavy.  All  goods  imported  must  bear  an  indication  of  their 
origin. 

CHILE 

No  special  legislation  exists  to  prevent  the  importation  of 
goods  bearing  a  false  indication  of  origin,  but  under  the 
customs  regulations,  a  declaration  of  origin  must  be  made  for 
statistical  purposes.  It  is  open  to  traders  who  have  regis- 
tered a  trade  mark  in  Chile  and  who  consider  that  their  busi- 
ness is  being  injured  by  the  sale  of  goods  bearing  false  mark- 
ing or  description  to  bring  an  action  against  persons  infring- 
ing their  rights,  but  the  time  and  expense  involved  generally 
deter  foreign  traders  from  prosecuting. 

CHINA 

No  laws  are  in  force  to  prevent  the  sale  or  importation  of 
goods  bearing  a  false  indication  of  origin.  No  steps  are  taken 
to  prevent  the  importation  of  goods  bearing  a  false  indication 
of  origin.  There  are  no  requirements  as  to  the  marking  of 
imported  goods,  to  show  the  country  or  place  of  origin  or 
to  denote  that  they  are  foreign. 

COLOMBIA 

No  laws  exist  prohibiting  the  sale  or  importation  of  goods 
bearing  a  false  indication  of  origin.  The  law  prohibits  the 
fraudulent  application  to  goods  of  another's  trade  name  or 
of  a  trade  mark  registered  in  Colombia.  A  civil  action  for 
the  purpose  of  claiming  damages  in  respect  of  these  offenses 
can  only  be  brought  by  the  person  injured.  A  criminal  action 
may  be  brought  by  any  foreign  merchant  affected,  either  act- 
ing through  the  representative  of  his  government  in  Colombia, 
or  in. any  other  way.  The  expense  of  judicial  proceedings 
would  usually  be  small.  The  indication  of  the  country  of 
origin  of  imported  goods  is  not  required  unless  they  are 
classified  in  the  customs  tariff  according  to  their  origin. 


606  FALSE  INDICATION  OF  ORIGIN 

COSTA  RICA 

No  legislation  is  in  force  to  prevent  the  sale  or  importation 
of  goods  bearing  false  indications  of  origin,  except  that  for 
the  protection  of  goods  having  duly  registered  trade  marks. 
A  criminal  action  could  be  brought  by  an  injured  party  or  his 
attorney  for  infringement  of  trade  marks.  If  a  consul  acted 
he  would  have  to  hold  power  of  attorney.  The  cost  of  prose- 
cution would  be  not  less  than  $300.  The  country  of  origin 
must  be  stated  in  the  consular  invoice  and  a  false  description 
in  such  invoice  would  render  goods  liable  to  confiscation. 

CUBA 

No  law  is  in  existence  to  prevent  the  sale*  or  importation 
of  goods  bearing  a  false  indication  of  origin,  but  in  the  event 
of  a  complaint  being  made  to  the  Department  of  Patents, 
based  on  the  arrangement  signed  at  Madrid  on  April  14,  1891, 
for  the  prevention  of  false  indications  of  origin  on  goods,  the 
matter  would  be  referred  by  that  department  to  the  Depart- 
ment of  Justice.  It  is  thought  that  a  complaint  should  be 
made  only  by  an  interested  party.  No  steps  are  taken  to 
prevent  the  importation  of  goods  bearing  false  indications  of 
origin.  There  are  no  requirements  as  to  the  marking  of 
imported  goods,  to  show  the  country  or  place  of  origin  or  to 
denote  that  they  are  foreign. 


The  law  prohibits  the  sale  or  offering  for  sale  of  goods  bear- 
ing a  false  indication  of  origin.  The  law  also  prohibits  the 
fraudulent  application  of  a  trade  mark  registered  in  Denmark 
or  of  a  trade  name  to  goods  for  sale,  or  the  offering  for  sale 
of  goods  thus  marked.  Infringements  of  the  law  are  generally 
treated  as  public  police  matters  and  entail  public  prosecution. 
Therefore,  no  expense  is  incurred  by  an  injured  party,  unless 
he  claims  damages,  in  which  case  a  private  prosecution  might 
be  necessary.  In  the  event  of  a  case  of  infringement  having 
escaped  the  notice  of  the  police  a  criminal  prosecution  would 
be  commenced  immediately  upon  receipt  of  notice  given  by 
the  injured  party  or  by  their  state's  legation  or  consular  rep- 
resentative. The  cost  of  prosecution  would  be  considerably 
less  than  in  the  United  States  or  England. 

DOMINICAN   REPUBLIC 

The  only  law  in  force  affecting  the  matter  in  question  re- 
lates to  the  protection  of  trade  marks.  This  law  prohibits  the 
use  of  trade  marks  indicating  false  origin  and  the  sale  or 


FALSE  INDICATION  OF  ORIGIN  607 

offering  for  sale  of  any  goods  bearing  such  trade  marks,  as 
well  as  the  sale  or  offering  for  sale  of  goods  bearing  a  fraudu- 
lent imitation  of  a  trade  mark  registered  in  the  republic. 
It  is  not  possible  to  state  as  yet  in  what  manner  the  law  will 
be  enforced.  No  steps  have  been  taken  hitherto  to  prevent 
the  importation  of  goods  bearing  a  false  indication  of  origin. 
There  are  no  requirements  as  to  the  marking  of  imported 
goods,  to  show  the  country  or  place  of  origin  or  to  denote 
that  they  are  foreign. 

EGYPT 

The  only  law  in  force  affecting  the  matter  in  question  is 
the  penal  code  of  the  native  courts  under  which  native  Egyp- 
tians can  be  prosecuted  for  selling  or  keeping  for  sale  goods 
bearing  a  false  trade  mark.  Persons  committing  these  of- 
fenses, who  are  entitled  to  the  benefits  of  the  capitulations, 
can  only  be  tried  by  the  consular  courts  in  accordance  with 
the  laws  of  their  respective  countries.  A  civil  action  may  be 
brought  before  the  Mixed  Tribunals  against  anyone  know- 
ingly importing  or  selling  goods  bearing  a  counterfeit  or  imi- 
tated mark,  at  the  suit  of  the  owner  of  the  mark.  No  official 
steps  are  taken  to  prevent  the  importation  of  goods  bearing 
a  false  indication  of  origin.  There  are  no  requirements  as 
to  the  marking  of  imported  goods,  except  tobacco,  to  show 
the  country  or  place  of  origin  or  to  denote  that  they  are 
foreign. 

FRANCE 

There  is  no  general  law  in  force  prohibiting  false  marks 
of  foreign  origin,  but  only  a  law  prohibiting  false  marks  of 
French  origin.  Goods  bearing  a  false  indication  of  French 
origin  are  seized  by  the  customs  on  importation.  The  decree 
of  loth  of  July,  1892,  approves  the  arrangement  of  Madrid  of 
1891,  which  enacts  that  all  goods  bearing  a  false  indication 
of  origin  in  which  one  of  the  contracting  states  (or  a  place 
situated  therein)  is  indicated  as  the  country  or  place  of  origin, 
shall  be  seized  on  importation.  No  direct  action  is,  however, 
taken  by  the  French  authorities  as  regards  the  seizure  of  goods 
bearing  false  indications  of  foreign  origin,  but  interested 
parties,  advised  by  the  customs  or  by  the  Procurator  of  the 
Republic,  have  the  right  to  effect  seizure  and  to  proceed  be- 
fore the  courts.  A  foreigner  being  an  interested  party,  could 
bring  an  action  for  damages  for  unfair  competition.  The  cost 
of  an  action  recently  brought  by  a  British  manufacturer 
against  an  imitator  of  his  mark  is  estimated  to  have  been 
300  francs,  plus  solicitor's  fees.  No  direct  steps  are  taken  by 
the  French  authorities  to  prevent  the  importation  of  goods 
bearing  a  false  indication  of  origin.  There  are  no  require- 
ments as  to  the  marking  of  imported  goods,  except  as  regards 


608  FALSE  INDICATION  OF  ORIGIN 

foreign  preserved  sardines,  vegetables,  plums  and  prunes, 
which  must  bear  an  indication  of  the  country  of  origin.  Foreign 
goods  of  any  kind  bearing  an  indication  likely  to  suggest  French 
origin  must,  to  avoid  seizure,  be  marked  with  the  name  of  the 
country  of  origin. 

GERMANY 

Section  14  of  the  Trade  Mark  Law  of  1894  prohibits  the 
wrongful  application  to  goods  of  the  trade  name  of  another 
party  or  of  a  registered  trade  mark,  as  well  as  the  placing 
on  the  market  or  offering  for  sale  of  goods  thus  marked. 
Trade  names  of  persons  residing  in  foreign  countries  enjoy 
this  protection  without  necessity  of  registration.  Section  15 
of  the  law  affords  protection  against  false  trade  descriptions, 
and  Section  16  prohibits  the  wrongful  application  to  goods 
of  the  name  of  a  place  or  district  as  well  as  the  offering  for 
sale  of  goods  so  marked.  Under  the  provisions  of  the  law 
against  Unfair  Competition,  1909,  "Any  person  taking  immoral 
action  in  commercial  transactions  for  the  purposes  of  compe- 
tition can  be  made  to  discontinue  such  action  and  to  pay 
compensation."  This  clause  covers  cases  of  false  indications 
of  origin.  Proceedings  may  be  taken  against  persons  in  re- 
spect of  false  indications  of  origin  either  by  means  of  a  civil 
action  before  the  ordinary  courts  or  by  means  of  criminal  pro- 
ceedings. Criminal  proceedings  except  under  Section  16  of 
the  Trade  Marks  Law,  can  only  be  instituted  on  the  demand 
of  injured  parties.  No  special  regulations  are  in  force  for  the 
prevention  of  importation  of  goods  bearing  a  false  indication 
of  origin,  but  goods  bearing  falsified  German  trade  marks  may 
be  seized  on  importation.  No  provisions  have  so  far  been 
laid  down  requiring  that  imported  foreign  goods  must  bear  an 
indication  of  the  place  of  origin  except  in  the  case  of  spark- 
ling wines  and  brandy ;  but  a  section  of  the  Trade  Mark  Law. 
1894,  authorizes  the  Federal  Council  to  retaliate,  should  any 
other  country  impose  any  conditions  as  to  the  marking  on 
goods  of  German  origin. 

GREAT  BRITAIN 

The  "Merchandise  Marks  Act,  1887,"  was  passed  with  the 
object  of  preventing  the  false  marking  and  false  trade  descrip- 
tion of  goods.  It  is  an  offense  under  the  Act  to  forge  a  trade 
mark,  or  to  make  or  have  in  possession  any  machine  or  other 
instrument  for  the  purpose  of  forging  a  trade  mark.  It  is 
also  an  offense  to  apply  any  false  trade  description  to  any 
goods,  or  to  be  in  possession  for  sale  of  any  goods  to  which 
a  false  description  or  trade  mark  has  been  applied. 

A  "trade  mark"  is  defined  so  as  to  include  foreign  trade 


FALSE  INDICATION  OF  ORIGIN  609 

marks  eatillcj  to  protection  in  the  United  Kingdom,  as  well 
as  trade  marks  registered  in  the  United  Kingdom. 

A  "trade  description"  is  defined  as  meaning  any  description, 
statement,  or  other  indication,  direct  or  indirect — 

(1)  As   to  the   number,   quantity,   measure,   gauge,   or 
weight  of  any  goods; 

(2)  As  to  the  place  or  country  in  which  the  goods  were 
produced ; 

(3)  As  to  the  mode  of  manufacture  of  such  goods; 

(4)  As  to  the  material  of  which  they  are  composed ;  or 

(5)  As  to  their  being  the  subject  of  any  existing  patent 
or  copyright. 

A  "false  trade  description"  means  a  trade  description  which 
is  false  in  a  material  respect  as  regards  the  goods  to  which 
it  is  applied. 

An  application  includes  not  only  a  direct  application,  but 
an  application  to  any  cover,  label,  etc.,  in  or  with  which  the 
goods  are  sold,  and  also  placing  goods  in  any  cover,  label,  etc., 
to  which  a  trade  mark  or  trade  description  has  been  applied. 
Offenses  under  the  Act  are  punishable  by  imprisonment  and 
by  fine  and  forfeiture  of  the  goods  concerned.  It  is  competent 
to  anyone  to  put  the  law  in  motion  for  the  punishment  of  the 
offender,  and  under  "The  Merchandise  Marks  Act,  1891  and 
1894,"  the  Board  of  Trade  and  the  Board  of  Agriculture,  re- 
spectively, are  authorized  to  prosecute  at  the  public  expense  in 
cases  affecting  the  general  interests  of  the  country,  or  of  a 
section  of  the  community  or  of  a  trade. 

The  Act  prohibits  the  importation  of  all  goods  which,  if 
sold,  would  be  liable  to  forfeiture,  viz. :  goods  to  which  a  false 
trade  mark  or  a  false  trade  description  has  been  applied.  The 
interests  of  foreign  manufacturers  and  trading  communities 
are  thereby  safeguarded  in  that  the  prohibition  applies  to 
imported  goods  bearing  directly  or  indirectly  an  indication 
of  manufacture  or  production  in  a  foreign  country  other  than 
the  foreign  country  in  which  the  goods  were  actually  manu- 
factured or  produced,  while  as  regards  the  importation  of 
goods  falsely  bearing  an  indication  of  British  origin,  the  Act 
expressly  prohibits  the  importation  of  "all  goods  of  foreign 
manufacture  bearing  any  name  or  trade  mark  being  or  pur- 
porting to  be  the  name  or  trade  mark  of  any  manufacturer, 
dealer,  or  trader  in  the  United  Kingdom,  unless  such  name 
or  trade  mark  is  accompanied  by  a  definite  indication  of  the 
country  in  which  the  goods  were  made  or  produced."  In  this 
way  Great  Britain  has  given  effect  to  the  stipulations  of  the 
International  Conventions  for  the  Protection  of  Industrial 
Property,  signed  at  Paris  in  1883,  and  at  Brussels  in  1900, 

39 


6io  FALSE  INDICATION  OF  ORIGIN 

and  of  the  Arrangement  of  Madrid,  1891,  and  for  the  Preven- 
tion of  false  indications  of  origin  on  goods. 

But  while  "The  Merchandise  Marks  Act,  1887,"  prohibits 
the  false  marking  and  false  trade  description  of  all  goods, 
whether  home  or  foreign,  it  does  not  prescribe  the  compulsory 
marking  of  the  country  of  origin  on  imported  goods,  and 
consequently  the  customs  regulations  provide  that  "goods  im- 
ported into  the  United  Kingdom  which  do  not  bear  any 
marks  whatever,  either  on  the  goods  themselves  or  on  the 
coverings  containing  them,  are  not  subject  in  any  way  to  the 
Act,  and  therefore  need  not  bear  any  statement  or  indica- 
tion such  as  "Made  Abroad,"  "Made  in  Germany,"  etc. 

GREECE 

No  laws  are  in  force  to  prevent  the  sale  or  importation  of 
goods  bearing  a  false  indication  of  origin,  but  some  of  the 
articles  of  the  penal  code  relating  to  fraud  might  possibly  be 
applicable.  The  fraudulent  application  of  another  person's 
mark  to  articles  of  commerce  and  the  sale,  exhibition  for  sale, 
and  circulation  of  articles  bearing  fraudulently  imitated  or 
counterfeit  marks  are  punishable  offenses.  If  the  articles 
of  the  penal  code  were  held  to  apply,  proceedings  would  have 
to  be  taken  by  an  injured  party  who  would  have  to  prove 
that  he  had  sustained  actual  damage.  No  steps  are  taken  to 
prevent  the  importation  of  goods  bearing  a  false  indication 
of  origin.  There  are  no  requirements  as  to  the  marking  of 
imported  goods  to  show  the  country  or  place  of  origin  or  to 
denote  that  they  are  foreign. 

GUATEMALA 

The  law  prohibits  the  marking  of  goods  with  false  indica- 
tions of  origin,  as  well  as  the  sale  or  offering  for  sale  of  goods 
so  marked.  The  sale  of  goods  bearing  a  false  trade  name  or 
trade  mark  is  a  punishable  offense.  A  trader  in  prosecuting 
for  the  above  offenses  would  not  encounter  any  great  difficulty 
in  obtaining  a  conviction.  Prosecution  is  expensive.  No 
steps  are  taken  officially  to  prevent  importation  of  goods 
bearing  false  indications  of  origin.  There  are  no  requirements 
as  to  the  marking  of  imported  goods  to  show  the  country  or 
place  of  origin  or  to  denote  that  they  are  foreign. 

HAYTI 

There  are  no  laws  in  force  to  prevent  the  sale  or  importa- 
tion of  goods  bearing  a  false  indication  of  the  country  of 
origin. 


FALSE  INDICATION  OF  ORIGIN  611 

HONDURAS 

No  laws  are  in  force  to  prevent  the  sale  or  importation  of 
goods  bearing  a  false, indication  of  origin,  except  those  in- 
tended for  the  protection  of  articles  which  have  been  duly 
registered  trade  marks ;  the  falsification  of  trade  marks  and 
the  offering  for  sale  of  goods  marked  with  a  false  trade  name 
or  trade  mark  are  punishable  offenses.  Prosecutions  for  these 
offenses  are  rare,  but  there  would  be  no  difficulty  in  procuring 
conviction.  Judicial  costs  are  generally  small  and  lawyers' 
fees  are  not  heavy.  No  steps  are  taken  to  prevent  the  impor- 
tation of  goods  bearing  false  indication  of  origin.  There  are 
no  requirements  as  to  the  marking  of  imported  goods  to  show 
the  country  or  place  of  origin. 

ITALY 

Under  the  laws  in  force  the  importation,  sale,  and  circula- 
tion of  goods  bearing  false  trade  marks,  or  false  or  forged 
marks  or  distinctive  signs,  or  marks  or  distinctive  signs  which 
might  deceive  purchasers  in  regard  to  origin  are  punishable 
offenses.  A  United  States  or  other  foreign  merchant  having 
registered  his  trade  mark  in  Italy  can  bring  a  civil  or  criminal 
action  against  anyone  who  counterfeits  his  trade  mark.  A 
purchaser  can  take  proceedings  if  he  can  prove  that  an  article 
represented  as  of  United  States  or  British  origin  has  been 
manufactured  in  Italy.  No  steps  are  taken  by  the  government 
to  prevent  the  importation  of  goods  bearing  a  false  indication 
of  origin,  but  as  the  customs  regulations  require,  for  purposes 
of  duty,  a  correct  declaration  of  the  country  of  origin,  there 
is  some  check  on  wholesale  abuse.  In  some  cases  consular 
certificates  are  demanded  in  support  of  declaration  of  origin. 
There  appear  to  be  no  requirements  as  to  the  marking  of 
imported  goods  to  denote  their  country  of  origin  or  that  they 
are  foreign. 

JAPAN 

There  are  no  laws  prohibiting  false  indications  of  origin 
unless  they  involve  the  infringement  of  a  registered  trade 
mark.  A  trade  mark  bearing  a  false  indication  of  origin  can- 
not be  registered.  If  the  false  indication  is  added  after  regis- 
tration the  registration  may  be  cancelled.  There  are  no 
regulations  prohibiting  the  importation  of  goods  bearing  a 
false  indication  of  origin;  but,  under  the  customs  regulations, 
in  order  to  obtain  an  importation  permit,  a  statement  is  re- 
quired including  information  as  to  place  of  production  or 
manufacture.  There  seems,  however,  to  be  no  definite  penalty 
for  inaccurate  statements  as  to  places  of  origin.  There  are 
no  regulations  requiring  the  marking  of  imported  goods  to 
show  the  country  or  place  of  origin  or  to  denote  that  they 
are  foreign. 


6 12  FALSE  INDICATION  OF  ORIGIN 

MEXICO 

Mexico  is  a  signatory  of  the  Convention  of  Paris  of  20th 
March,  1883,  and  also  of  the  Madrid  Arrangement  of  14th 
April,  1891,  and  for  the  international  registration  of  trade 
marks,  but  she  has  not  yet  adhered  to  the  Madrid  Arrange- 
ment of  1891  for  the  prevention  of  false  indications  of  origin. 
The  only  law  reported  upon  relates  to  the  protection  of  trade 
marks,  and  prohibits  the  fraudulent  application  to  goods  of 
another's  registered  trade  mark  or  of  an  imitation  of  a  regis- 
tered trade  mark,  and  also  the  sale,  and  putting  on  sale,  or 
circulation  of  goods  thus  marked.  The  sale  or  circulation  of 
goods  bearing  a  trade  mark  indicating  false  Origin  is  also  pro- 
hibited. Under  the  law  referred  to  prosecutions  for  the  above 
offenses  may  be  instituted  by  the  public  prosecutor  or  at  the 
instance  of  an  aggrieved  person.  State  prosecutions  would 
apparently  cost  nothing;  in  other  cases  a  litigant's  expenses 
might  range  between  $500  and  $5,000.  A  general  customs 
ordinance  requires  a  declaration  of  the  name  of  the  country 
from  which  goods  proceed. 

•MOROCCO 

Goods  belonging  to  native  Moorish  merchants  bearing 
counterfeits  of  British  or  French  trade  marks  are  liable  to 
confiscation,  and  the  author  of  the  falsification  would  be  pun- 
ished. British  subjects  in  Morocco  are  bound  to  observe  the 
provisions  of  the  British  Merchandise  Marks  Act  of  1887  and 
may  be  prosecuted  for  any  offense  against  this  Act  in  relation 
to  any  property  or  right  of  another  British  subject.  British 
trade  marks  registered  in  the  United  Kingdom  are  protected 
against  infringement  by  British  subjects.  British  trade  marks 
registered  in  Austria-Hungary,  Belgium,  France,  Germany, 
Italy,  Netherlands,  Portugal,  Russia,  Spain  and  United  States 
are  protected  in  Morocco  as  against  the  subjects  of  those 
countries,  who  could  be  prosecuted  in  their  respective  consular 
courts  for  infringing  such  trade  marks. 

NETHERLANDS 

The  law  prohibits  the  importation,  sale  or  offering  for  sale 
in  the  European  territory  of  the  Netherlands  of  goods  falsely 
marked  with  another's  trade  name  or  mark  or  an  imitation 
thereof,  as  well  as  of  goods  falsely  bearing  the  name  of  any 
locality  as  indication  of  the  place  of  origin,  when  such  indi- 
cation is  associated  with  a  trade  name  of  a  fictitious  character. 

NORWAY 

The  law  prohibits  the  sale  or  offering  for  sale,  but  not  the 
importation,  of  goods  bearing  a  false  indication  as  to  their 


FALSE  INDICATION  OF  ORIGIN  613 

place  of  origin.  No  steps  are  taken  to  prevent  the  importation 
of  goods  bearing  a  false  indication  of  origin.  There  are  no 
requirements  as  to  the  marking  of  imported  goods  to  show 
the  country  or  place  of  origin  or  to  denote  that  they  are 
foreign. 

PANAMA 

There  is  no  law  preventing  the  importation  and  sale  of  goods 
bearing  a  false  indication  of  origin.  There  are  no  regulations 
as  to  the  marking  of  imported  goods  to  show  the  country  or 
place  of  origin  or  to  denote  that  they  are  foreign. 

PERU 

There  are  no  laws  to  prevent  the  sale  or  importation  of 
goods  whose  country  of  origin  may  have  been  falsely  indi- 
cated. Consular  invoices  showing  country  of  origin  are  re- 
quired for  all  imported  goods.  There  is  no  obligation  to  mark 
imported  goods  with  an  indication  of  their  place  of  origin. 

PORTUGAL 

The  Portuguese  law  appears  to  provide  for  the  seizure  of 
goods  bearing  false  indications  of  origin,  whether  the  goods 
are  thus  marked  before  or  after  importation — in  either  case 
on  the  petition  of  an  interested  party.  The  enforcement  of  the 
law,  so  far  as  false  indications  of  origin  are  concerned,  seems 
to  be  of  very  rare  occurrence.  Traders,  if  aggrieved,  could 
prosecute.  Foreign  governments,  through  their  representa- 
tives, could  press  for  the  enforcement  of  the  law  only  while 
the  case  is  within  the  jurisdiction  of  the  customs  and  before  it 
reaches  the  courts.  The  cost  of  an  action  brought  by  a  trader 
might  be  between  £30  and  £100.  No  official  steps  are  taken 
to  prevent  the  importation  of  goods  bearing  a  false  indication 
of  origin,  but  it  would  be  the  duty  of  a  customs  officer  who 
noticed  the  case  to  report  and  await  orders  before  passing  the 
goods.  There  is  no  obligation  to  mark  imported  goods  to 
show  the  country  or  place  of  origin,  or  to  denote  that  they  are 
foreign. 

ROUMANIA 

The  Trade  Marks  Law  of  1879  prohibits  the  importation  of 
all  goods  bearing  false  indications  of  Roumanian  origin  and 
renders  them  liable  to  seizure  either  by  the  customs  authori- 
ties or  at  the  request  of  the  public  prosecutor  or  of  the  injured 
party.  By  the  Anglo-Roumanian  Convention  of  1893,  goods 
bearing  false  indications  of  origin  are  dealt  with  in  the  same 
way.  The  false  application  to  goods  of  another's  registered 
trade  mark  and  the  sale  or  exposition  for  sale  of  goods  bearing 


6 14  FALSE  INDICATION  OF  ORIGIN 

falsely-applied,  counterfeit,  or  imitated  registered  trade  marks 
are  prohibited  by  law.  Subjects  of  countries  like  Great  Brit- 
ain, which  have  concluded  reciprocity  trade  mark  conventions 
with  Roumania,  obtain  this  trade  mark  protection.  A  civil  or 
criminal  action  may  be  brought  for  infringement  of  trade 
marks  after  seizure  of  goods.  The  probable  cost  of  the  action 
would  be  from  £26  to  £48.  No  special  steps,  except  those 
already  mentioned,  are  taken  to  prevent  importation  of  goods 
bearing  a  false  indication  of  origin.  There  is  no  law  as  to 
the  compulsory  marking  of  imported  goods  with  the  name 
of  the  country  of  origin,  but  under  the  convention  with  Great 
Britain,  if  a  vendor  in  Roumania  puts  his  name  or  address 
upon  goods  of  British  origin  coming  into  Ronmania,  they  must 
also  bear  an  indication  of  the  country  or  place  of  manufacture 
or  production. 

RUSSIA 

Foreign  goods  bearing  a  false  indication  of  Russian  origin, 
consisting  of  a  Russian  trade  mark  (Kleimo),  or  the  address 
of  a  Russian  manufacturer,  are  seized  by  the  customs  on 
importation.  The  trade  mark  law  of  1896  apparently  (though 
the  interpretation  has  never  been  decided  by  the  courts)  pro- 
hibits the  application  to  goods  of  trade  marks  containing  false 
indications  of  any  origin,  as  well  as  the  sale  of  such  goods. 
Cases  of  false  indications  of  non-Russian  origin  are  not  taken 
up  officially,  but  if  the  interested  manufacturer  or  the  repre- 
sentative of  the  foreign  power  concerned  notified  the  authori- 
ties of  any  contravention  of  the  trade  marks  law,  they  would 
have  to  institute  proceedings.  The  cost  of  prosecution  is  nil 
except  for  lawyer's  fees.  No  steps  are  taken  to  prevent  im- 
portation of  goods  bearing  a  false  indication  of  origin.  There 
are  no  requirements  as  to  the  compulsory  marking  of  imported 
goods  to  show  the  country  or  place  of  origin,  or  to  denote 
that  they  are  foreign. 

SALVADOR 

No  laws  are  in  force  to  prevent  the  importation  or  sale  of 
goods  bearing  a  false  indication  of  foreign  origin  except  as 
regards  goods  specially  protected  by  registered  trade  marks. 
The  sale  of  goods  marked  with  a  false  trade  mark  is  prohibited 
by  law.  Prosecutions  are  rare,  but  there  would  be  no  serious 
difficulty  in  procuring  a  conviction.  Judicial  fees  as  a  rule 
are  low,  and  lawyer's  services  not  highly  paid.  No  steps  are 
taken  to  determine  the  place  of  origin  of  imported  goods. 
There  are  no  requirements  as  to  the  marking  of  imported 
goods  to  show  the  country  or  place  of  origin. 


FALSE  INDICATION  OF  ORIGIN  615 

SERVIA 

There  are  no  laws  or  regulations  in  force  to  prevent  the 
sale  or  importation  of  goods  bearing  a  false  indication  of 
origin.  The  law  prohibits  the  false  application  to  goods  of 
trade  marks  registered  in  Servia,  and,  in  cases  of  infringement 
of  trade  marks  not  registered  in  Servia,  an  action  for  damages 
may  be  brought,  provided  that  injury  can  be  proved. 

SPAIN 

No  special  steps  are  taken  to  prevent  the  importation  of 
goods  bearing  a  false  indication  of  origin ;  but  the  stipula- 
tions of  the  Convention  of  Paris  (1883),  the  Arrangement  of 
Madrid  for  the  prevention  of  false  indications  of  origin  (1891), 
and  the  Additional  Acts  of  Brussels  (1900),  are  generally  in 
force.  The  importation  of  goods  bearing  a  false  indication 
of  Spanish  origin  or  bearing  falsified  or  imitated  Spanish  trade 
'marks  is  prohibited  by  the  Law  of  Industrial  Property  (1902). 
This  law  also  prohibits  the  use  of  the  name  of  a  place  of 
manufacture  to  designate  a  manufactured  or  natural  product 
coming  from  another  place.  The  sale  of  articles  bearing  a 
false  Spanish  trade  mark  is  a  punishable  offense  under  the 
penal  code.  Foreigners,  whose  states  are  not  members  of  the 
Industrial  Property  Union  only  possess  trade  mark  rights  in 
virtue  of  special  treaties,  and  in  cases  where  there  are  no 
treaties  the  principle  of  reciprocity  is  observed.  At  the  de- 
mand of  an  interested  party,  a  fine  may  be  imposed  on  per- 
sons employing  false  indications  of  origin.  Civil  or  criminal 
actions  may  be  brought  against  infringers  of  Spanish  trade 
marks.  The  cost  of  a  civil  action  would  be,  at  most,  between 
£200  and  £280;  of  a  criminal  action  nil,  as  the  states  prose- 
cute. Goods  manufactured  either  in  Spain  or  abroad  may 
bear  respectively  the  name  or  mark  of  a  foreign  or  Spanish 
merchant,  provided  the  indication  of  the  country  of  manu- 
facture is  clearly  visible  and  that  the  proper  permission  to 
use  the  name  or  mark  has  been  obtained. 

SWEDEN 

There  are  no  laws  or  regulations  in  force  prohibiting  the 
importation  of  goods  bearing  a  false  indication  of  foreign 
origin ;  but  the  customs  authorities  have  power  to  seize  and 
confiscate  imported  goods  bearing  a  false  indication  of  Swed- 
ish origin.  Foreigners  may  register  and  protect  their  trade 
marks  in  Sweden  if  their  state  has  entered  into  a  special 
agreement  with  Sweden  on  the  subject.  An  action  for  the 
infringement  of  a  trade  mark  can  only  be  taken  by  the  injured 
party.  There  are  no  requirements  as  to  the  marking  of  im- 


616  FALSE  INDICATION  OF  ORIC.IN 

ported  goods  to  denote  the  place  or  country  of  origin,  except 
that  imported  goods  bearing  indications  suggesting  Swedish 
origin  must,  to  escape  seizure  by  the  customs,  also  bear  a 
clear  indication  that  they  are  of  foreign  production. 

SWITZERLAND 

The  Swiss  government  has  made  no  special  provisions  for 
carrying  out  the  Convention  of  Paris  for  the  Protection  of 
Industrial  Property  (1883),  as  modified  by  the  Additional  Act 
of  Brussels  of  1900,  or  for  the  execution  of  the  Agreement 
of  Madrid  of  April  14,  1891,  with  regard  to  the  prevention  of 
false  indications  of  origin.  The  Federal  Law  of  September 
26,  1890,  relating  to  the  protection  of  trade  marks  and  marks 
showing  the  origin  of  goods,  forbids  the  assignment  to  a 
product  of  a  false  indication  of  origin ;  but  the  courts  have 
never  decided  whether  this  law  applies  to  false  indications  of 
origin  generally,  and  in  particular  to  cases  provided  for  in 
Article  10  of  the  Paris  Convention,  and  in  Article  1  of  the 
Arrangement  of  Madrid  of  1891  for  the  prevention  of  false 
indications  of  origin,  or  merely  to  such  as  involve  infringe- 
ment of  registered  trade  marks.  The  sale,  offering  for  sale, 
or  putting  into  circulation  of  goods  bearing  falsified  or  imi- 
tated registered  trade  marks  is  prohibited  by  the  law.  Civil 
or  criminal  action  may  be  brought  for  offenses  against  the 
trade  marks  law  by  the  owner  of  the  trade  mark  infringed 
or  by  the  defrauded  purchaser  of  falsely  marked  goods.  No 
special  steps  are  taken  to  prevent  the  importation  of  goods 
bearing  a  false  indication  of  origin.  Imported  matches  must 
be  marked  with  the  name  of  the  manufacturer's  firm  or  his 
registered  trade  mark.  Ordinance  dated  29th  January,  1909, 
enact  that  (i)  certain  foreign  food  products  can  only  be  im- 
ported into  or  sold  or  offered  for  sale  in  Switzerland  if  they 
bear  an  indication  of  the  country  of  origin;  (ii)  certain  other 
foreign  food  products  can  only  be  imported  if  accompanied 
by  certificates  of  origin.  Otherwise,  there  are  no  requirements 
as  to  the  marking  of  imported  goods  to  show  the  country  or 
place  of  origin  or  to  denote  that  they  are  foreign. 

TUNIS 

It  would  appear  that  goods  bearing  a  false  indication  of 
origin  can  be  seized  on  importation  or  in  the  interior,  or  be 
prohibited  from  importation  by  the  action  of  the  customs, 
of  the  public  prosecutor,  or  of  parties  liable  to  be  injured,  in 
accordance  with  the  Arrangement  of  Madrid  (1891),  which 
Tunis  has  joined.-  The  laws  also  afford  protection  against  the 
fraudulent  use  of  a  trade  name  and  the  reproduction  or  imita- 
tion of  trade  marks  registered  in  Tunis.  In  cases  of  false 


FALSE  INDICATION  OF  ORIGIN  617 

indication  of  origin  the  public  prosecutor  should  prosecute 
on  the  complaint  of  injured  parties  or  of  the  representatives 
of  foreign  governments  that  have  adhered  to  the  Convention 
of  Paris  (1883)  and  the  Arrangement  of  Madrid  (1891)  ; 
injured  parties  may  also  join  in  the  public  prosecution  or  sue 
before  civil  courts.  No  cost  is  entailed  on  complainants  if  the 
public  prosecutor  alone  undertakes  the  prosecution.  There 
appear  to  be  no  laws  or  regulations  as  to  the  marking  of 
imported  goods  with  an  indication  of  the  country  of  origin. 

TURKEY 

There  are  no  laws  or  regulations  in  force  relating  to  the 
importation  or  sale  of  goods  bearing  a  false  indication  of 
origin. 

UNITED  STATES 

Section  27  of  the  Trade  Marks  Act  of  1905  prohibits  the 
importation  of  articles  bearing  a  false  copy  or  imitation  of  a 
trade  mark  registered  in  the  United  States,  or  of  a  trade  name 
recorded  in  the  United  States  Treasury  Department,  or  bear- 
ing a  false  indication  of  United  States  or  foreign  origin.  The 
protection  of  the  Act  as  regards  trade  marks  and  trade  names 
is  extended  to  foreigners  resident  in  countries  which  give 
similar  privileges  to  the  citizens  of  the  United  States,  pro- 
vided they  duly  register  their  trade  marks  or  record  their 
trade  names  in  the  United  States.  Anyone  unlawfully  using 
a  trade  mark  registered  under  the  Act  is  liable  to  an  action 
for  damages  at  the  suit  of  the  owner.  Only  civil  actions  are 
possible.  Representatives  of  foreign  governments  cannot 
initiate  proceedings.  Damages  may  also  be  claimed  for  the 
imitation  of  trade  marks  not  registered  in  the  United  States 
and  of  other  marks  on  the  ground  of  unfair  trade  by  the 
owner  of  such  marks,  who  has  to  prove  fraudulent  intention. 
By  Section  7  of  the  1909  Tariff  Act  all  articles  of  foreign 
manufacture  or  production  capable  of  being  marked,  stamped, 
branded,  or  labelled  without  injury,  must  be  marked,  stamped, 
branded,  or  labelled  in  English  so  as  to  indicate  their  country 
of  origin ;  and  all  packages  containing  imported  goods  must 
be  marked,  stamped,  branded,  or  labelled  in  English  so  as 
to  indicate  their  country  of  origin. 

URUGUAY 

No  legislation  is  in  force  prohibiting  false  indications  of 
origin  nor  are  importers  held  legallv  responsible  for  the  cor- 
r^ctness  of  indications  of  .origin  on  imported  goods.  It  is 
thought,  however,  that  if  a  merchant  sold  goods  falsely 
marked  as  of  British  origin,  the  purchaser  could  claim  dam- 


618  CONSULAR  COURTS 

ages  under  the   civil   code.     The   legal   procedure   would  be 
expensive  and  protracted. 

VENEZUELA 

No  law  is  in  force  to  prevent  the  importation  and  sale  of 
goods  bearing  a  false  indication  of  origin.  The  importation 
and  offering  for  sale  of  goods  falsely  marked  with  trade  mark 
registered  in  Venezuela  are  prohibited  by  law.  Any  pur- 
chaser of  goods  thus  marked  may  bring  a  criminal  action 
against  their  vender.  The  cost  of  bringing  such  an  action 
is  from  $75  to  $100. 


The  unsatisfactory  nature  of  this  protection  for  many 
reasons  is  evident.  In  the  first  place,  it  is  necessary  that 
the  mark  to  be  protected  shall  be  registered  in  the  country 
of  every  consul  whose  aid  it  is  desired  to  invoke  for  the 
protection  thereof.  Thus  it  becomes  necessary  for  the  owner 
of  a  trade  mark,  perhaps  used  only  in  China,  to  register  it  in 
a  considerable  number  of  European  countries,  to  his  great 
inconvenience  and  expense.  Moreover,  when  the  trade  mark 
is  infringed,  he  must  pursue  infringers  of  different  nationali- 
ties in  different  courts,  each  before  the  consul  of  his  own 
country.  These  several  tribunals,  of  course,  administer  so 
far  as  possible  the  laws  of  their  own  countries ;  so  that  the 
relief  to  be  obtained  for  the  same  infringement  in  the  same 
market  against  different  offenders  will  be  as  various  as  the 
nationalities  of  the  infringers  themselves.  Furthermore,  the 
consular  courts  cannot  always  be  highly  satisfactory  tribunals 
before  which  to  litigate  a  subject  as  difficult,  and  often  as  little 
understood,  as  that  of  a  trade  mark  infringement.  Additional 
difficulties  arise,  because  of  the  relations  between  foreigners 
and  natives,  the  latter  of  whom  are  of  course  beyond  the 
reach  of  the  consular  jurisdiction. 

The  subject  was  under  discussion  before  the  Washington 
conference  of  the  International  Union  for  the  Protection  of 
Industrial  Property,  with  the  idea  of  embodying  in  the  Inter- 
national Convention  a  substitute  for  the  particular  treaties  relative 
to  this  subject. 

Clauses  were  proposed  which  were  substantially  re-enact- 
ments of  existing  treaties,  to  which  most  of  the  adherents 
of  the  Union  were  parties.  It  was,  however,  their  lack  of 
novelty  that  prevented  their  adoption.  It  was  objected  that 
they  offered  no  improvement  over  existing  conditions.  They 
provided  for  no  just  reciprocity,  because  certain  of  the  coun- 


CONSULAR  COURTS  619 

tries  of  the  Union  had  no  consular  tribunals.  Thus  a  Swede 
would  be  able  to  prosecute  infringement  of  his  mark,  by  grace 
of  the  proposed  addition  to  the  convention,  before  an  Aus- 
trian consul;  while  an  Austrian  would  have  no  tribunal  to 
which  to  resort  against  a  Swedish  infringer.  Secondly,  the 
requirement  that  any  citizen  of  a  country  of  the  Union  who 
would  protect  his  trade  mark  in  China  must  first  register  it 
in  all  the  countries  of  the  Union  was  considered  to  involve 
quite  an  unnecessary  and  unjustifiable  expense.  The  final 
sense  of  the  conference  was  that  the  international  bureau  at 
Berne  should  consider  a  project  for  creating  in  the  territories 
where  there  exists  a  consular  jurisdiction,  and  particularly  in 
China,  a  system  of  registration  that  would  afford  a  basis  for 
the  protection  of  trade  marks  before  consular  courts  without 
the  necessity  of  registration  in  the  country  whose  consular 
jurisdiction  was  invoked. 

The  result  of  the  consideration  given  to  this  problem  by 
the  international  bureau  is  a  subject  of  an  article  in  La 
Propriete  Industrielle.  Great  difficulties  were  recognized,  arising 
alike  out  of  the  principles  of  international  law  and  the  practical 
problems  of  administration.  How  to  extend  the  beenfits  of  the 
proposed  system  to  the  citizens  of  those  countries,  members  of  the 
Union,  whose  consuls  did  not  exercise  an  extra-territorial  jurisdic- 
tion, is  one  of  the  initial  difficulties.  Then  as  to  the  registrations 
themselves,  the  question  arises  whether  they  should  have 
legal  effect  in  European  countries  or  only  in  China,  and 
whether  they  should  be  considered  as  declarative  of  property 
in  the  marks  or  as  attributive  of  property  thereto.  Finally,  the 
formalities  of  registration,  the  cost  and  duration  thereof  and 
whether  registration  should  be  made  at  one  central  bureau 
or  in  several  places,  were  matters  to  be  considered.  The  bu- 
reau is  of  the  opinion  that  the  interests  at  stake  are  of  suffi- 
cient importance  to  justify  an  innovation  of  this  character, 
because  the  number  of  Europeans  established  in  these  coun- 
tries, and  the  extent  of  their  business,  are  constantly  growing. 
Moreover,  manufacturers  and  traders  in  Europe  and  in  the 
United  States  find  in  the  East  important  markets  and  want 
protection  there  against  the  infringement  of  their  trade  marks. 
Therefore,  it  is  deemed  expedient  to  facilitate  the  repression 
of  these  abuses,  by  means  of  a  common  agreement,  until  the 
time  when  the  native  powers  themselves  shall  be  in  a  position 
to  establish  a  normal  regime  of  their'  own. 

After  mature  deliberation  it  has  seemed  possible  to  effect 
an  agreement  adapted  to  attain  this  result,  without  too  great 
complications  and  without  impairing  the  rights  and  preroga- 
tives of  the  contracting  states.  The  proposed  basis  of  such 
an  arrangement  is  briefly:  First,  a  uniform  code  governing 
trade  marks  and  kindred  matters  to  be  made  the  subject  of 


620  RED  CROSS 

v 

treaty  agreement  between  the  members  of  the  Union,  and  to 
be  enforced  in  the  consular  courts  of  the  contracting  states, 
in  place  of  the  divergent  codes  in  force  in  the  several  states. 
Secondly,  a  plan  for  registrations,  whereby  .marks  might  be 
deposited  at  any  consulate,  to  be  by  that  consulate  reported 
to  a  central  bureau,  there  to  be  registered,  published  in  a 
special  organ  and  reported  to  the  consulates  designated  by  the 
governments,  so  that  each  should  possess  a  complete  collec- 
tion of  the  marks  registered  under  that  arrangement. 

This  is,  of  course,  the  international  system  of  trade  mark 
registration  now  in  operation  between  certain  countries, 
adopted  in  every  detail  for  this  new  purpose. 

The  operation  of  the  system  should  be  somewhat  as  follows: 
A  Belgian,  for  example,  carrying  on  business  in  the  Orient, 
would  deposit  his  mark  at  the  Belgian  consulate  in  Constanti- 
nople, which  would  register  it  at  the  central  bureau  and  that 
in  turn  would  communicate  it  to  the  respective  consulates. 
When  a  case  of  the  infringement  by  a  member  of  the  Union 
arose  at  Canton,  the  registrant  would  bring  the  infringer  be- 
fore the  consular  court  to  which  the  party  is  amenable  and, 
fortified  with  a  certificate  of  registration,  he  would  claim  and 
obtain  the  benefit  of  the  remedies  which  the  terms  of  the  in- 
ternational arrangement  made  available.  (La  Fropriete  In- 
dustrielle  1911,  p.  172.) 

As  this  plan  was  evolved  for  the  protection  of  marks  pri- 
marily in  China,  it  is  possible  that  the  establishment  of  a 
Mongolian  republic  will  pave  the  way  for  such  internal  legisla- 
tion as  will  render  useless  the  plan  outlined.  If  not,  the 
practical  difficulties  in  the  way  of  its  adoption  may  safely  be 
reckoned  on  to  postpone  indefinitely  its  successful  installa- 
tion. / 

RED  CROSS 

At  the  conference  of  the  Red  Cross  in  Geneva,  a  convention 
was  agreed  upon  providing  that  each  of  the  countries  thereto 
should  do  ail  in  its  power  by  legislation  to  prevent  the  use 
of  the  Red  Cross  for  any  sort  of  commercial  purpose.  Officers 
of  the  National  Red  Cross  Society  maintain  that  the  use  of 
their  insignia  in  the  United  States,  by  persons  or  corporations 
which  were  not  using  it  in  1906,  is  a  direct  violation  of  the 
law  already  referred  to,  and  that  no  further  legislation  is 
necessary  for  the  purpose  of  preventing  the  use  that  is  now 
becoming  so  common. 

Section  4  of  the  Act  of  January  5,  1905,  incorporating  the 
American  National  Red  Cross,  is  as  follows : 

That  from  and  after  the  passage  of  this  Act  it  shall  be 
unlawful  for  any  person  within  the  jurisdiction  of  the  United 
States  to  falsely  and  fraudulently  hold  himself  out  as,  or  rep- 


MERCHANDISE  MARKS  ACT  621 

resent  or  pretend  himself  to  be,  a  member  of,  or  an  agent  for, 
the  American  National  Red  Cross,  for  the  purpose  of  solicit- 
ing, collecting  or  receiving  money  or  material ;  or  for  any  per- 
son to  wear  or  display  the  sign  of  the  Red  Cross,  or  any 
insignia  colored  in  imitation  thereof  for  the  fraudulent  pur- 
pose of  inducing  the  belief  that  he  is  a  member  of,  or  an 
agent  for,  the  American  National  Red  Cross.  Nor  shall  it  be 
lawful  for  any  person  or  corporation,  other  than  the  Red 
Cross  of  America,  not  now  lawfully  entitled  to  use  the  sign 
of  the  Red  Cross,  hereafter  to  use  such  sign  or  any  insignia 
colored  in  imitation  thereof  for  the  purpose  of  trade  or  as  an 
advertisement  to  induce  the  sale  of  any  article  whatsoever. 
If  any  person  violates  the  provisions  of  this  section,  he  shall 
be  guilty  of  a  misdemeanor  and  shall  be  liable  to  a  fine  of  not 
less  than  one  nor  more  than  five  hundred  dollars,  or  impris- 
onment for  a  term  not  exceeding  one  year,  or  both,  for  each 
and  every  offense.  The  fine  so  collected  shall  be  paid  to  the 
American  National  Red  Cross. 

THE  MERCHANDISE  MARKS  ACT 

The  present  British  Merchandise  Marks  Act  was  passed  in 
1887  and  was  a  re-enactment  of  an  act  passed  in  1862. 

The  Act  of  1887  can  be  regarded,  first  as  a  criminal  act.  It 
provides  that  any  person  shall  be  guilty  of  an  offense,  punish- 
able on  indictment  or  on  summary  conviction  by  fine  or  imprison- 
ment, who  either  forges  a  trade  mark  by  making  or  imitating  it 
without  the  consent  of  the  proprietor,  or  by  falsifying  any  gen- 
uine mark;  or  falsely  applies  any  trade  mark  to  goods,  by  ap- 
plying it,  or  an  imitation  of  it,  without  the  concent  of  the 
proprietor ;  or  applies  to  goods  any  false  trade  description,  that 
is,  a  description  or  indication  as  to  the  number,  quantity,  measure, 
etc.,  or  the  place  or  country  of  origin  of  the  goods,  or  the  mode 
of  manufacturing  them,  or  their  material,  or  as  to  their  being  the 
subject  of  an  existing  patent,  privilege,  or  copyright,  which  is 
false  in  a  material  respect;  or  sells  or  exposes,  or  has  in  his 
possession  for  sale,  or  any  purpose  of  sale  or  manufacture,  any 
goods  to  which  a  forged  trade  mark  or  false  trade  description  is 
applied,  or  to  which  any  trade  mark,  or  imitation  of  a  trade  mark 
is  falsely  applied.  A  criminal  intention  on  the  part  of  the  person 
charged  is  a  necessary  element  of  each  of  the  above  mentioned 
offenses,  but  the  burden  of  proving  that  he  has  acted  with  the 
consent  of  the  proprietor  of  the  trade  mark,  or  without  intent  to 
defraud  or  otherwise  innocently,  as  also  the  burden  of  establish- 
ing any  of  the  special  excuses  allowed  by  the  act,  is  cast  upon  the 
person  charged  as  soon  as  it  is  .established  that  he  has  done  any 
of  the  acts  which,. coupled  with  such  criminal  intention  and  in 
the  absence  of  these  excuses,  bring  his  case  within  the  definition 
of  an  offense  under  the  statute. 


622  MERCHANDISE  MARKS  ACT 

Secondly,  it  can  be  regarded  in  part  as  a  customs  act,  as  the 
act,  moreover,  forbids  the  importation  of  goods  by  means  of  or 
in  relation  to  which  an  offense  against  it  has  been  committed, 
and  also  of  all  goods  of  foreign  manufacture  bearing  any  name 
or  trade  mark  being  or  purporting  to  be  that  of  a  manufacturer 
or  trader  within  the  country,  unless  it  be  accompanied  by  a 
definite  indication  of  the  country  where  the  goods  were  made  or 
produced.  It  contains  also  some  special  provisions  with  regard 
to  the  marking  of  watch  cases. 

Several  of  the  British  Colonies  and  Independencies  have  mer- 
chandise marks  acts,  although  they  have  no  trade  mark  registra- 
tion act,  which  indicates  that  trade  marks  are  recognized.  There 
are  trade  mark  acts  in  some  of  the  British  Colonies  and  they  are 
practically  the  same  as  the  British  Trade  Marks  Act;  and  the 
merchandise  marks  act  in  all  the  colonies  is  similar  to  the  British 
Merchandise  Marks  act.  • 


EXTRACT  FROM  "MERCHANDISE  MARKS  ACT,  1887  " 

An  act  to  consolidate  and  amend-  the  law  relating  to  fraudulent 
marks  on  merchandise.  (23rd  August,  1887.) 

Be  it  enacted  by  the  Queen's  most  excellent  Maj<  >ty,  by  and 
with  the  advice  and  consent  of  the  lords  spiritual  and  temporal, 
and  commons,  in  this  present  parliament  assembled,  and  by  the 
authority  of  the  same,  as  follows : 

1.  This  Act  may  be  cited  as  the  Merchandise  Marks  Act, 
1887. 

2.  (1)     Every  person  who 

(a)  forges  any  trade  mark;  or 

(b)  falsely  applies  to  goods  any  trade  mark  or  any  mark 
so  nearly  resembling  a  trade  mark  as  to  be  calculated  to 
deceive ;  or 

(c)  makes  any  die,  block,  machine,  or  other  instrument 
for  the  purpose  of  forging,  or  of  being  used  for  forging,  a 
trade  mark ;  or 

(d)  applies  any  false  trade  description  to  goods ;  or 

(e)  disposes  of  or  has  in  his  possession  any  die,  block, 
machine,  or  other  instrument  for  the  purpose  of  forging  a 
trade  mark;  or 

(f)  causes  any  of  the  things  above  in  this  section  men- 
tioned to  be  done, 

shall,  subject  to  the  provisions  of  this  Act,  and  unless  he  proves 
that  he  acted  without  intent  to  defraud,  be  guilty  of  an  offense 
against  this  Act. 

(2)     Every  person  who  sells,  or  exposes  for,  or  has  in  his 


MERCHANDISE  MARKS  ACT  623 

possession  for,  sale  or  any  purpose  of  trade  or  manufacture,  any 
goods  or  things  to  which  any  forged  trade  mark  or  false  trade 
description  is  applied,  or  to  which  any  trade  mark  or  mark  so 
nearly  resembling  a  trade  mark  as  to  be  calculated  to  deceive  is 
falsely  applied,  as  the  case  may  be,  shall,  unless  he  proves — 

(a)  That  having  taken  all  reasonable  precautions  against 
committing  on  offense  against  this  Act,  he  had  at  the  time 
of  the  commission  of  the  alleged  offense  no  reason  to  suspect 
the  genuineness  of  the  trade  mark,  mark,  or  trade  descrip- 
tion ;  and 

(b)  That  on  demand  made  by  or  on  behalf  of  the  prose- 
cutor, he  gave  all  the  information  in  his  power  with  respect 
to  the  persons  from  whom  be  obtained  such  goods  or  things ; 
or 

(c)  That  otherwise  he  had  acted  innocently; 

be  guilty  of  an  offense  against  this  Act. 

(3)  Every  person  guilty  of  an  offense  against  this  Act  shall 
be  liable — 

(i)  on  conviction  on  indictment,  to  imprisonment,  with 
or  without  hard  labor,  for  a  term  not  exceeding  two  years, 
or  to  fine,  or  to  both  imprisonment  and  fine;  and 

(ii)  on  summary  conviction  to  imprisonment,  with  or 
without  hard  labor,  for  a  term  not  exceeding  four  months, 
or  to  a  fine  not  exceeding  twenty  pounds,  and  in  the  case  of 
a  second  or  subsequent  conviction  to  imprisonment,  with  or 
without  hard  labor,  for  a  term  not  exceeding  six  months,  or 
to  a  fine  not  exceeding  fifty  pounds ;  and 

(iii)  in  any  case  to  forfeit  to  her  Majesty  every  chattel, 
article,  instrument,  or  thing  by  means  of  or  in  relation  to 
which  the  offense  has  been  committed. 

(4)  The  Court  before  whom  any  person  is  convicted  under 
this  section  may  order  any  forfeited  articles  to  be  destroyed  or 
otherwise  disposed  of  as  the  Court  thinks  fit. 

(5)  If  any  person  feels  aggrieved  by  any  conviction  made 
by  a  court  of  summary  jurisdiction  he  may  appeal  therefrom  to 
a  court  of  quarter  sessions. 

(6)  Any  offense  for  which  a  person  is  under  this  Act  liable 
to  punishment  on  summary  conviction  may  be  prosecuted,  and 
any  articles  liable  to  be  forfeited  under  this  Act  by  a  Court  of 
Summary  Jurisdiction  may  be  forfeited,  in  manner  provided  by 
the  Summary  Jurisdiction  Acts :     Provided  that  a  person  charged 
with  an  offense  under  this  section  before  a  court  of  Summary 
Jurisdiction  shall,  on  appearing  before  the  court,  and  before  the 


624  MERCHANDISE  MARKS  ACT 

charge  is  gone  into,  be  informed  of  his  right  to  be  tried  on  indict- 
ment, and  if  he  requires  be  so  tried  accordingly. 

A  person  shall  be  deemed  to  forge  a  trade  mark  who  either — 

(a)  without  the  assent  of  the  proprietor  of  the  trade 
mark  makes  that  trade  mark  or  a  mark  so  nearly  resembling 
that  trade  mark  as  to  be  calculated  to  deceive;  or 

(b)  falsifies  any  genuine  trade  mark,  whether  by  alter- 
ation, addition,  effacement,  or  otherwise ; 

and  any  trade  mark  or  mark  so  made  or  falsified  is  in  this  Act 
referred  to  as  a  forged  trade  mark. 

Provided  that  in  any  prosecution  for  forging  a  trade  mark  the 
burden  of  proving  the  assent  of  the  proprietor  shall  lie  on  the 
defendant. 

A  person  shall  be  deemed  to  apply  a  trade  mark  or  mark  or 
trade  description  to  goods  who — 

(a)  applies  it  to  the  goods  themselves;  or 

(b)  applies  it  to  any  covering,  label,  reel,  or  other  thing 
in  or  with  which  the  goods  are  sold  or  exposed  or  had  in 
possession  for  any  purpose  of  sale,  trade,  or  manufacture ; 
or 

(c)  places,  encloses,  or  annexes  any  goods  which  are 
sold  or  exposed  or  had  in  possession   for  any  purpose  of 
sale,  trade,  or  manufacture,  in,  with,  or  to  any  covering, 
label,  reel,  or  other  thing  to  which  a  trade  mark  or  trade 
description  has  been  applied ;  or 

(d)  uses  a  trade  mark  or  mark  or  trade  description  in 
any  manner  calculated  to  lead  to  the  belief  that  the  goods 
in  connection  with  which  it  is  used  are  designated  or  de- 
scribed by  that  trade  mark  or  mark  or  trade  description. 

No  prosecution  for  an  offense  against  this  Act  shall  be  com- 
menced after  the  expiration  of  three  years  next  after  the  com- 
mission of  the  offense,  or  one  year  next  after  the  first  discovery 
thereof  by  the  prosecutor,  whichever  expiration  first  happens. 

Whereas  it  is  expedient  to  make  further  provision  for  pro- 
hibiting the  importation  of  goods  which,  if  sold,  would  be 
liable  to  forfeiture  under  this  Act;  be  it  therefore  enacted  as 
follows : 

(1)  All  such  goods,  and  also  all  goods  of  foreign  manu- 
facture, bearing  any  name  or  trade  mark  being  or  purporting 
to  be  the  name  or  trade  mark  of  any  manufacturer,  dealer,  or 
trader  in  the  United  Kingdom,  unless  such  name  or  trade  mark 
is  accompanied  by  a  definite  indication  of  the  country  in  which 
the  goods  were  made  or  produced,  are  hereby  prohibited  to  be 
imported  into  the  United  Kingdom,  and,  subject  to  the  provi- 
sions of  this  section,  shall  be  included  among  goods  prohibited 


MERCHANDISE  MARKS  ACT  625 

to  be  imported  as  if  they  were  specified  in  section  forty-two  of 
the  Customs  Consolidation  Act,  1876. 

(2)  Before  detaining  any  such  goods,  or  taking  any  further 
proceedings  with  a  view  to  the  forfeiture  thereof  under  the  law 
relating  to  the  Customs,  the  Commissioners  of  Customs  may  re- 
quire the  regulations,  under  this  section,  whether  as  to  informa- 
tion, security,  conditions,  or  ottoer  matters,  to  be  complied  with, 
and  may  satisfy  themselves  in  accordance  with  those  regulations 
that  the  goods  are  such  as  are  prohibited  by  this  section  to  be 
imported. 

(3)  The  Commissioners  of  Customs  may  from  time  to  time 
make,  revoke  and  vary,   regulations,  either  general  or  special, 
respecting  the  detention  and  forfeiture  of  goods,  the  importation 
of  which  is  prohibited  by  this  section,  and  the  conditions,  if  any, 
to  be  fulfilled  before  such  detention  and  forfeiture,  and  may  by 
such  regulations  determine  the  information,  notices,  and  security 
to  be  given,  and  the  evidence  requisite  for  any  of  the  purposes 
of  this  section,  and  the  mode  of  verification  of  such  evidence. 

(4)  Where  there  is  on  any  goods  a  name  which  is  identical 
with  or   a  colorable  imitation  of  the  name  of  a   place  in  the 
United  Kingdom,  that  name,  unless  accompanied  by  the  name  of 
the  country  in  which  such  place  is  situate,  shall  be  treated  for 
the  purposes  of  this  section  as  if  it  were  the  name  of  a  place 
in  the  United  Kingdom. 

(5)  Such  regulations  may  apply  to  all  goods,  the  importa- 
tion of  which  is  prohibited  by  this  section,  or  different  regula- 
tions may  be  made  respecting  different  classes  of  such  goods  or 
of  offenses  in  relation  to  such  goods. 

(6)  The  Commissioners  of  Customs  in  making  and  in  ad- 
ministering the  regulations  and  generally  in  the  administration 
of  this   section,   whether  in  the  exercise  of  any  discretion  or 
opinion,  or  otherwise,  shall  act  under  the  control  of  the  Commis- 
sioners of  her  Majesty's  Treasury. 

(7)  The  regulations  may  provide  for  the   informant  reim- 
bursing the  Commissioners  of  Customs  all  expenses  and  damages 
incurred  in  respect  of  any  detention  made  on  his  information, 
and  of  any  proceedings  consequent  on  such  detention. 

(8)  All  regulations  under  this  section  shall  be  published  in 
the  "London  Gazette"  and  in  the  "Board  of  Trade  Journal." 

(9)  This  section  shall  have  effect  as  if  it  were  part  of  the 
Customs  Consolidation  Act,  187G,  and  shall  accordingly  apply  to 
the  Isle  of  Man  as  if  it  were  part  of  the  United  Kingdom. 

(10)  Section  two  of  the  Revenue  Act,  1883,  shall  be  repealed 
as  from  a  day  fixed  by  regulations  under  this  section,  not  being 
later  than  the  first  day  of  January,  1888,  without  prejudice  to 
anything  done  or  suffered  thereunder. 

40 


626  MERCHANDISE  MARKS  ACT 

MERCHANDISE  MARKS  ACT,  1891 

(54  Viet.  c.  15) 

An  Act  to  amend  the  Merchandise  Marks  Act, 
(May  11,  1891) 

Be  it  enacted  by  the  Queen's  most  Excellent  Majesty,  by  and 
with  the  advice  and  consent  of  the  Lords  Spiritual  and  Temporal, 
and  Commons,  in  this  present  Parliament  assembled,  and  by  the 
authority  of  the  same,  as  follows: 

1.  The  customs  entry  relating  to  imported  goods  shall,  for 
purposes  of  the  Merchandise  Marks  Act,  1887,  be  deemed  to  be  a 
trade  description  applied  to  the  goods. 

2.  (1)     The  Board  of  Trade  may,  with  the  concurrence  of 
the  Lord  Chancellor,  make  regulations  providing  that  in  cases 
appearing  to  the   Board  to  affect  the  general  interests  of  the 
country,  or  of  a  section  of  the  community,  or  of  a  trade,  the 
prosecution  of  offenses  under  the  Merchandise  Marks  Act,  1887, 
shall  be  undertaken  by  the  Board  of  Trade,  and  prescribing  the 
conditions  on  which  such  prosecutions  are  to  be  so  undertaken. 
The  expenses  of  prosecutions  so  undertaken  shall  be  paid  out  of 
moneys   provided   by   Parliament.      (2)     All   regulations   made 
under  this  section  shall  be  laid  before  Parliament  within  three 
weeks  after  they  are  made  if  Parliament  is  then  sitting,  and  if 
Parliament  is  not  then  sitting,  within  three  weeks  after  the  be- 
ginning of  the  next  session  of  Parliament,  and  shall  be  judicially 
noticed,  and  shall  have  effect  as  if  enacted  by  this  Act,  and  shall 
be  published  under  the  authority  of  Her  Majesty's   Stationery 
Office.     (3)     Nothing  in  this  Act  shall  affect  the  power  of  any 
person   or  authority   to  undertake   prosecutions  otherwise  than 
under  the  said  regulations. 

3.  This  Act  may  be  cited  as  the  Merchandise   Marks  Act, 
1891,  and  the  Merchandise  Marks  Act,  1887,  and  this  Act  may  be 
cited  together  as  the  Merchandise  Marks  Act,  1887  and  1891. 

MERCHANDISE  MARKS  (PROSECUTION)  ACT,  1894 

An  Act  for  enabling  the  Board  of  Agriculture  to  undertake 
Prosecutions  in  certain  cases  under  Merchandise  Marks  Act, 
1887. 

(20th  July,  1894.) 

Be  it  enacted  by  the  Queen's  most  Excellent  Majesty,  by  and 
with  the  advice  and  consent  of  the  Lords  Spiritual  and  Temporal, 
and  Commons,  in  this  present  Parliament  assembled,  and  by  the 
authority  of  the  same,  as  follows: 

1.     The  powers  exercisable  by  the  Board  of  Trade  under  the 


MERCHANDISE  MARKS  ACT  627 

Merchandise  Marks  Act,  1891,  with  respect  to  the  prosecution  of 
offenses  under  the  Merchandise  Marks  Act,  1887,  may  in  cases 
which  appear  to  the  Board  of  Agriculture  to  relate  to  agricultural 
or  horticultural  produce  be  exercised  by  the  Board,  and  in  such 
cases  the  former  Act  shall  apply  as  if  the  Board  of  Agriculture 
were  referred  to  therein  instead  of  the  Board  of  Trade. 

2.  This  Act  shall  not  extend  to  Ireland. 

3.  This  Act  may  be  cited  as  the  Merchandise  Marks  (Prose- 
cutions)   Act,   1894,  and   shall  be   read  with  the   Merchandise 
Marks  Acts,  1887  and  1891. 

CONSOLIDATED  INSTRUCTIONS 

Custom  House,  London,  26th  February,  1900. 

The  following  consolidation  of  the  General  Orders  and  other 
instructions  on  the  subject  of  the  Merchandise  Marks  Act  of 
1887,  is  issued  for  the  information  and  guidance  of  the  officers. 

Goods  imported  into  the  United  Kingdom  which  do  not  bear 
any  marks  whatever,  either  on  the  goods  themselves  or  on  the 
coverings  containing  them,  are  not  subject  in  any  way  to  the  Act, 
and  therefore  need  not  bear  any  statement  or  indication,  such  as 
''Made  abroad,"  "Made  in  Germany,"  etc. 

The  goods,  therefore,  prohibited  under  the  Act  to  which  the 
attention  of  officers  is  called  may  be  classed  under  two  heads : 

(A)  Goods   with   marks   which   suggest  British   origin   and 
require,  in  order  to  legalize  their  importation,  some  counteracting 
qualification. 

(B)  Goods  with  marks  prohibited  on  other  grounds. 

It  is  to  be  noted  that  by  Sec.  1  of  the  Merchandise  Marks 
Act,  1891  (54-  Viet.  c.  15),  the  customs  entry  relating  to  imported 
goods  shall,  for  the  purpose  of  the  Merchandise  Marks  Act,  1887, 
be  deemed  to  be  a  trade  description  applied  to  the  goods. 

(A)     Goods  with  Marks  Suggesting  British  Origin. 
Goods  falling  under  (A)   may  be  again  subdivided: 

(a)  Goods,  whether  manufactured  or  raw,  having  ap- 
plied to  them  any  description,  figures,  words,  or  marks,  or 
arrangement  or  combination  thereof,  which  by  being  or  in- 
cluding, either  expressly  or  by  reference,  the  name  of  a  place 
in  or  a  part  of  the  United  Kingdom  (e.  g.,  "Irish"—"  of  Ire- 
land"), or  in  any  other  way,  constitute  a  statement  or  other 
indication,  direct  or  indirect  that  the  goods  were  made  or 
produced  in  the  United  Kingdom. 

(b)  Goods  of  foreign  manufacture  bearing  any  name  or 
mark  which  is,  or  purports  to  be,  the  name  or  trade  mark 
of  a  manufacturer,  dealer,  or  trader  in  the  United  King- 
dom. 

(c)  Goods,  whether  manufactured  or  raw,  having  applied 


628  MERCHANDISE  MARKS  ACT 

to  them  a  generally  used  trade  description,  which  in  indi- 
cating a  particular  class  of  goods  or  method  of  manufacture, 
includes  expressly  the  name  of  a  place  in,  or  a  part  of  the 
United  Kingdom,  and  is  thereby  calculated  to  mislead  as  to 
the  place  of  the  manufacture  or  production  of  the  goods. 

(A)  (6)  relates  to  manufactured  goods,  and  not  to  entirely 
raw  goods,  and  the  word  "purports"  is  to  be  understood  as 
referring  to  any  name  or  names  reasonably  suggesting  a  British 
manufacturer,  dealer  or  trader,  whether  the  name  is  or  is  not 
known  to  the  officer;  or  as  referring  to  a  trade  mark,  not  being 
merely  matter  of  decoration  or  ornament,  which  reasonably  sug- 
gests itself  as  British  by  containing  English  wording,  or  other 
representation  specially  designed  to  convey,  and,  in  fact,  con- 
veying an  impression  of  British  manufacture. 

As  to  (Y)  that  the  words  "trade  description  which  in  indicating 
a  particular  class  of  goods  or  method  of  manufacture,  includes 
the  name  of  a  place  in  or  a  part  of  the  United  Kingdom,  and  is 
thereby  calculated  to  mislead''  mean  such  terms  as  Kidderminster 
Carpets,  "Balbriggan"  on  hosiery,  or  *"  Shetland"  on  shawls,  and 
the  like,  which,  although  they  might  be  held  to  be  merely  phrases 
descriptive  of  method  of  manufacture,  are  yet  calculated  to  mis- 
lead as  to  place  of  origin.  Where,  however,  such  description  has 
become  associated  with  a  particular  class  of  goods  in  a  manner 
practically  to  preclude  any  probability  of  deception,  as  "Portland 
Cement"  and  "Bath  Chaps,"  the  description  need  not  be  accom- 
panied by  a  statement  of  the  country  of  actual  production.  This 
applies  also  to  the  case  of  colonial  names  describing,  for  instance, 
classes  of  wool,  etc.,  where,  although  the  names  are  British,  the 
circumstances  preclude  mistake. 

All  such  goods  as  above  specified  are  to  be  detained  and 
reported  to  the  Board  unless  they  are  qualified  as  follows : 

As  to  (a),  by  a  definite  indication  of  make  or  production 
out  of  the  United  Kingdom. 

As  to  (b),  by  a  definite  indication  of  the  country  in  which 
the  goods  were  made. 

As  to  (c),  by  the  name  of  the  country  in  which  the  goods 
were  actually  made  or  produced,  with  a  statement  that 
they  were  made  or  produced  there. 

With  regard  to  (a),  "Made  Abroad"  will  be  generally  suf- 
ficient. With  regard  to  (6),  the  name  of  the  country  is  a  suf- 
ficient indication,  without  the  words  'made  in,"  if  the  name  or 
trade  mark  only  appears.  Where  there  is  an  address,  as  "John 
Smith,  Sheffield,"  then  the  qualification  must  be  "Made  in  Ger- 
many," or  similar  wording ;  "Germany"  alone  would  not  counter- 
act "Sheffield";  (c)  requires  the  full  statement  "Made  in  Ger- 
many." 


MERCHANDISE  MARKS  ACT  629 

Officers  are  not  expected  to  decide  whether  goods  were 
actually  made  or  produced  in  the  country  from  which  in  the 
qualification  they  are  stated  to  come;  the  name  of  some  foreign 
country,  or  of  some  place  in  a  foreign  country  is  sufficient. 

If  the  goods  bear  the  name  of  a  place  identical  with,  or  a 
colorable  imitation  of,  the  name  of  a  place  in  the  United  King- 
dom, the  name  should  be  accompanied  by  the  name  of  the 
country  in  which  the  place  is  situated.  Thus,  Boston,  in  Mas- 
sachusetts, should  be  accompanied  by  the  name  'United  States," 
or  by  the  initials  "U.  S.  A.,"  or  even  by  the  abridgment  "Mass." 

The  use  of  the  English  language  applied  as  a.  description  to 
goods  imported  from  non-English  speaking  countries  is  not, 
simply  as  language  and  where  not  involving  the  name  of  any 
place  in,  or  part  of,  the  United  Kingdom,  a  "direct,"  and,  as  a 
rule,  is  not  to  be  regarded  as  an  "indirect,"  indication  of  British 
origin.  Where,  however,  there  is  good  ground  for  considering 
that  the  use  of  the  language  was  specially  designed  to  convey, 
and  does  in  fact  convey,  an  impression  of  such  origin,  then  the 
language  will  be  a  description  within  (a)  under  heading  "Goods 
with  Marks  Suggesting  British  Origin." 

(B)     Goods  Prohibited  on  Other  Grounds. 

Goods  prohibited  on  grounds  other  than  marking  suggestive 
of  British  origin  are  those  which,  whether  manufactured  or  raw, 
have  applied  to  them  a  false  trade  description. 

(a)  As  to  the  place  or  country  in  which  they  were  made  or 
produced ; 

(b)  As  to  trade  marks  or  names  so  as  to  constitute  forgery; 

(c)  As  to  number,  quantity,  measure,  gauge  or  weight,  and 
mode  of  manufacture  or  material ; 

(d)  As  to  being  the  subject  of  any  existing  patent,  privilege, 
or  copyright. 

As  to  (a),  this  relates,  of  course  (British  origin  having  been 
dealt  with  above),  to  questions  between  two  foreign  countries; 
that  is  to  say,  to  goods  with  marks  indicating  make  or  produc- 
tion in  a  place  or  country  which  is  not  that  in  which  the  goods 
were  made  or  produced.  The  Act  does  not  specify  particularly 
what  is  to  be  the  qualification  here;  but  if  the  mark  indicates, 
expressly,  or  by  reference,  a  place  or  country  not  that,  in  reality, 
of  the  make  or  production  of  the  goods,  there  must  be  a  definite 
qualification  to  the  effect  that  the  goods  were  not  made  or  pro- 
duced in  the  place  or  country  indicated ;  or,  a  definite  indication 
of  the  place  or  country  in  which  the  goods  were  made  or  pro- 
duced. 

A  mark  which,  though  not  naming,  includes  the  name  of  a 
place  or  country,  is  to  be  held  as  naming  such  place  or  country. 
For  instance,  a  wine,  the  produce  of  Germany,  and  described  as 


630  UNFAIR  TRADE 

''Port"  or  "Sherry"  (which  words  include  the  names  of  the 
places  Oporto  and  Xeres)  should  have  that  description  accom- 
panied by  the  statement  "produced  in  Germany,"  or  should  be 
described  as  "German  Port"  or  "Australian  Sherry,"  etc.  Such 
a  mark  as  "Lancashire  Swedish"  on  Swedish  iron,  where  the 
qualifying-  word  follows  the  misleading  name,  may  be  admitted. 
As  in  marks  suggesting  British  origin,  exception  to  this  rule  is 
made  in  cases  where  the  name  of  a  place  in  a  trade  description 
is  indicative  merely  of  the  character  of  the  goods,  and  is  not 
calculated  to  mislead  as  to  the  country  of  origin.  The  descrip- 
tion "Brussels  Carpet"  is  an  exception  of  this  kind. 

For  judging  between  two  foreign  countries  the  Act  provides 
that,  in  the  absence  of  proof  to  the  contrary,  the  port  of  shipment 
of  goods  shall  be  prima  facie  evidence  of  the  place  or  country 
in  which  the  goods  were  made  or  produced ;  and  this  rule  the 
officers  can,  generally,  act  upon.  Where,  however,  the  port  of 
shipment  is  merely  an  ordinary  trading  route  from  some  inland 
country,  as  Rotterdam  or  Antwerp  with  respect  to  Germany,  or 
Hamburg  with  respect  to  Austria,  the  officers  may,  if  they  have 
no  reason  to  doubt  the  good  faith  of  the  importer,  accept  the 
statement  that  the  goods  are  the  make  or  produce  of  the  inland 
country. 

The  use  of  language  of  'one  foreign  country  on  goods  of 
another  must  not  be  viewed  more  strictly  than  its  use  in  cases 
indicating  British  origin.  The  use  of  a  certain  language  is 
allowed  freely  to  all  countries  when,  by  custom,  that  language  is 
usually  applied  to  such  goods:  e.  g.,  Spanish  on  tobacco  and 
cigars,  when  the  recognized  words  are  applied  only  to  color, 
shape,  size,  and  the  like ;  or  French  on  sardines,  when  confined 
to  the  words  'Sardines  a  1'huile,"  without  any  additional  French 
description. 

The  forging  of  a  trade  mark  is  the  application  to  goods  of  any 
figure,  words,  or  marks,  or  arrangement  or  combinaton  thereof, 
reasonably  calculated  to  lead  persons  to  believe  that  the  goods 
are  the  manufacture  or  the  merchandise  of  some  person  other 
than  the  person  whose  manufacture  or  merchandise  they  really 
are;  and  this  includes  the  name  or  initials  of  a  person.  The 
figures,  words,  or  marks  applied  need  not  be  an  actual  trade 
mark,  or  actual  name  or  initials,  provided  they  are  a  colorable 
imitation  of  the  mark,  name,  or  initials  of  a  person  carrying  on 
business  in  connection  with  goods  of  the  same  description,  and 
are  used  without  his  authority. 

UNFAIR  COMPETITION 

No  trader  has  a  right  to  pass  off  his  goods  as  though  they 
were  the  goods  of  another  trader. 

The  majority  of  unfair  competition  cases  are  instances  of  at- 
tempts by  the  defendant  to  pass  off  his  goods  as  those  of  his 


UNFAIR  TRADE  631 

rival.  There  are  cases,  however,  of  attempts  of  defendants  to 
pass  off  not  their  goods  as  those  of  the  rival,  but  the  rival's 
goods  as  their  goods  and  goods  of  third  persons  as  the  goods  of 
the  plaintiff.  These  are  just  as  much  cases  of  unfair  competi- 
tion— passing  off  cases — as  the  more  common  sort.  (Nims  on 
Unfair  Competition,  Sec.  15.) 

Unfair  competition  consists  essentially  in  the  conduct  of  a 
trade  or  business  in  such  a  manner  that  there  is  an  express  or 
implied  representation  that  the  goods  or  business  of  the  one  man 
are  the  goods  or  business  of  another. 

Unfair  competition  may  be  defined  as  passing  off  or  attempting 
to  pass  off  upon  the  public  the  goods  or  business  of  one  man  as 
being  the  goods  or  business  of  another.  (American  and  Eng. 
Enc.  of  Law,  Second  Ed.) 

It  has  long  been  accepted  as  a  principle  governing  cases  of 
unfair  competition  in  trade,  arising  from  simulation  of  packages, 
labels,  or  descriptive  designations,  where  no  technical  trade  mark 
is  involved,  that  there  can  be  no  remedy  without  proof  of  a 
fraudulent  purpose  on  the  part  of  the  defendant.  Perhaps  the 
fact  that  so  high  an  authority  as  the  United  States  Supreme 
Court  has  approved  the  principle,  would  seem  to  make  it  a  finality 
in  the  law  of  this  subject.  Mr.  Chief  Justice  Fuller,  of  that 
Court,  said : 

"The  deceitful  representation  or  perfidious  dealing  must  be 
made  out  or  be  clearly  inferable  from  the  circumstances." 
(Lawrence  Mfg.  Co.  vs.  Tennessee  Mfg.  Co.,  138  U.  S.,  537.) 

Nevertheless  we  venture  to  believe  that  this  is  not  the  principle 
which  will  ultimately  control  the  decisions  of  the  courts  in  cases 
of  this  kind.  On  the  contrary,  the  only  logical  and  rational 
principle  is  a  much  broader  one,  to-wit,  that  irrespective  of  any 
intent  whatever,  no  man  has  the  right  to  sell  or  make  possible 
the  sale  of  his  goods  to  purchasers  who  seek  and  believe  they  are 
getting  the  goods  of  a  rival. 

The  principle  has  been  broadly  stated  by  the  English  courts, 
and  there  are  remarks  in  the  opinions  of  several  cases  in  the 
United  States  Courts  which  enunciate  the  principle  with  equal 
generality.  Nevertheless  we  know  of  no  case  until  the  recently 
decided  "Van  Houten  Cocoa  Case"  (Van  Houten,  et  al.,  vs. 
Hooton  Cocoa  &  Chocolate  Co.,  130  Fed.  Rep.,  600)  that  has  been 
put  squarely  and  unequivocally  upon  this  basis,  holding  that  the 
question  of  intent  was  quite  immaterial. 

The  complainants  in  this  case  had  for  many  years  been  en- 
gaged in  the  manufacture  in  Holland  and  in  the  sale  ,in  the 
United  States  and  elsewhere  of  a  fine  grade  of  cocoa,  which 
they  put  out  under  the  name  of  "Van  Houten's  Cocoa."  In  the 
fall  of  1897  the  defendant  corporation  was  organized  and  com- 
menced the  manufacture  and  sale  under  the  name  of  "Hooton's" 
of  a  cocoa  which  it  sold  at  about  half  the  price  of  complainants' 


632  UNFAIR  TRADE 

goods.  One  Hooton  was  an  incorporator  and  the  first  president 
of  the  defendant,  but  subsequently  retired  from  the  company. 

There  was  no  similarity  of  appearance  between  the  goods  of 
the  complainants  and  those  of  the  defendant.  On  this  point  the 
court  said : 

"Neither  in  size,  shape,  coloring  nor  ornamentation  is  there 
any  imitation  of  the  packages  of  the  complainant." 

Nor  was  there  any  proof  of  intent  to  deceive  purchasers  or  to 
sell  their  goods  as  those  of  complainants.  The  court  said 
further : 

"Neither  in  the  inception  of  the  defendant  company,  including 
the  choice  of  a  name,  nor  the  display  of  their  goods  or  in  the  con- 
duct of  their  business,  am  I  able  to  discover  any  intent  to  infringe 
the  rights  of  the  complainants  or  to  profit  by  the  good  will  which 
they  have  built  up." 

Nevertheless,  it  appeared  that  by  reason  of  the  similarity  in 
the  names  under  which  the  two  products  were  marketed,  confu- 
sion had  arisen  and  defendant's  goods  had  been  purchased  by 
customers  who  believed  that  they  were  goods  of  complainants. 
Upon  this  ground  the  court  granted  a  decree  against  the  defend- 
ant, with  an  injunction  providing  that 

"They  shall  not  use  the  word  'Hooton'  to  designate  their 
cocoa,  except  as  they  clearly  and  unmistakably  state  in  the  same 
connection  that  such  cocoa  is  not  the  Van  Houten  cocoa  manu- 
factured by  the  complainants,  Van  Houten  &  Zoon." 

Although  the  opinion  is  undoubtedly  right  in  principle  and  in 
line  with  the  development  of  the  law  upon  this  subject,  it  is 
that  of  a  court  of  first  instance,  and  is  subject  to  review  on 
appeal.  It  is  therefore  of  interest  and  importance  rather  for 
what  it  indicates  of  the  tendency  of  judicial  opinion  than  as 
furnishing  a  guide  of  final  authority  in  cases  of  this  nature. 

LIABILITY  OF  MANUFACTURER 

Plaintiffs,  English  soda  water  manufacturers,  had  for  twenty- 
five  years  sold  their  goods  under  a  peculiar  label  which  was  at- 
tached to  the  neck  of  the  bottle.  This  label  was  of  a  chocolate 
color  with  a  red  medallion  in  the  center  and  had  printed  on  it  in 
large  white  characters  the  words  "Schweppes'  Soda  Water." 
The  defendant  began  to  sell  soda  water  out  un  in  bottles  bearing 
also  a  chocolate  colored  label  with  a  red  medallion  in  the  center 
upon  which  were  printed  in  white  letters  "Gibbon's  Soda  Water." 
In  determining  that  there  was  no  such  similarity  between  these 
labels  as  was  calculated  to  deceive  customers,  the  English  Court 
of  Appeal  based  its  decision  entirely  upon  what  would  appear  to 
a  purchaser  who  examined  the  labels.  It  was  claimed  by  the 
plaintiff  that  in  serving  a  customer,  the  seller  of  the  defendant's 
goods  might  pass  them  off  as  plaintiff's  by  concealing  that  por- 


UNFAIR  TRADE  633 

tion  of  the  label  which  bore  the  defendant's  name  and  availing 
himself  of  the  similarity  in  the  general  appearance  of  the  remain- 
ing portions  of  the  label.  The  court,  however,  held  that  the 
possibility  of  such  deception  could  not  form  the  basis  of  an  action 
by  the  plaintiffs ;  that  such  deception  as  occurred  was  the  decep- 
tion of  the  seller  of  the  article  and  not  deception  for  which  the 
defendant  was  responsible;  that  the  defendant's  label  if  fairly 
used  was  not  calculated  to  deceive  the  customer  and  its  use  could 
not.be  enjoined  because  of  the  fact  that  it  might  be  fraudulently 
used  in  such  a  way  as  to  accomplish  deception.  (Schweppes', 
Ltd.,  vs.  Gibbon,  XXII,  Rep.  Pat.,  etc.,  Cas.,  113.) 

This  same  question  was  under  discussion  in  the  House  of  Lords 
in  a  somewhat  earlier  case  in  which  it  had  been  repeatedly  asked 
of  the  witnesses  upon  the  trial  whether  the  similarity  between  the 
goods  were  such  as  would  enable  a  dishonest  trader  to  pass  off  the 
one  for  the  other,  and  the  witness  said  "Oh  yes,  it  could  be  done 
very  easily."  The  court  said  that  for  such  fraud  the  defendants 
were  in  no  way  responsible  and  that  the  substitution  by  dis- 
honest tradesmen  of  one  article  for  another,  which  did  not  re- 
semble it  to  such  an  extent  as  would  be  calculated  to  deceive, 
was  a  matter  that  had  no  bearing  upon  the  plaintiff's  cause  of 
action.  (Payton  &  Co.,  Ltd.,  vs.  Snelling,  XVII,  Rep.  Pat.,  etc., 
Cas.,  629  [635].) 

INTENT  AS  AN  ELEMENT 

The  Landlords'  Protective  Bureau,  a  Chicago  corporation, 
brought  suit  to  restrain  the  defendants,  a  copartnership,  pro- 
prietors of  "Campe's  Commercial  Agency,"  from  advertising 
their  "Landlords'  Protective  Department,"  upon  the  ground  that 
their  use  of  the  latter  term  caused  confusion  between  the  business 
of  the  defendants  and  that  of  the  plaintiff. 

The  plaintiff  was  organized  in  1886  for  the  purpose  of  keeping 
a  directory  of  information  regarding  tenants,  their  responsibility 
and  desirability,  to  furnish  information  of  this  nature  to  landlords 
and  to  assist  the  latter  in  evicting  undesirable  tenants.  The 
defendants  started  the  "Landlords'  Protective  Department"  in 
connection  with  their  business,  in  the  year  1901,  for  the  same 
purposes  and  for  the  additional  purpose  of  .furnishing  legal  advice 
to  landlords  in  all  matters  of  dispute  between  themselves  and 
their  tenants.  It  was  denied  by  the  defendants  that,  at  the  time 
they  established  the  department  in  question,  they  had  any  knowl- 
edge of  the  plaintiff  corporation  or  that  they  so  named  it  with 
any  fraudulent  intent  to  injure  the  plaintiff's  business.  It  ap- 
peared in  evidence,  that  numerous  of  the  defendants'  subscribers 
had  applied  at  the  office  of  the  nlaintiff  for  assistance,  under  the 
impression  that  the  plaintiff's  office  was  a  branch  of  the  defend- 
ants'. It  was  also  testified  that  a  solicitor  of  business  for  the  de- 
fendants had  stated  to  various  persons  that  the  plaintiff's  business 


634  UNFAIR  TRADE 

was  a  part  of  the  defendants'  business.  It  was,  however,  shown 
by  the  defendants  that  they  had  forbidden  their  agents  to  make 
such  representations,  as  soon  as  they  became  aware  of  the  plain- 
tiff's existence.  The  court  said : 

"We  think  the  true  ground  upon  which  the  jurisdiction  of  a 
court  of  equity  to  restrain  the  defendants  as  prayed  in  this  appeal 
rests,  is  that  the  name  assumed  by  the  defendants  is  so  similar 
to  that  of  the  complainant  as  to  mislead  and  confuse  the  public 
minds  as  to  the  identity  of  the  business  in  which  the  two  parties 
are  engaged.  *  *  *  The  'Landlords'  Protective  Bureau',  and 
the  'Landlords'  Protective  Department'  are  manifestly  so  similar 
as  to  almost  necessarily  lead  to  complication  and  confusion  in  the 
business  of  the  two  parties  and  it  is  of  no  importance  in  this  view 
of  the  case,  that  the  defendants  had  no  knowledge  of  the  exist- 
ence of  complainant  until  after  they  had  organized  their  rival 
business  or  had  no  intention  of  injuring  complainant.  *  *  * 
We  think  the  undisputed  fact  that  the  similarity  of  names 
resulted  in  embarrassment  and  injury  to  complainant,  justified 
the  conclusion  of  the  Appellate  Court,  and  its  judgment  will, 
accordingly,  be  affirmed."  (Koebel  vs.  Chicago  Landlord's  Pro- 
tective Bureau,  71  N.  E.  Rep.,  362.) 


The  defendant,  a  corporation,  owning  and  conducting  several 
wine  and  liquor  stores  in  the  city  of  New  York,  advertised  for 
sale  Hostetter's  Bitters,  at  the  price  of  three  dollars  per  gallon.  The 
bitters  manufactured  by  the  Hostetter  Company,  the  complainant, 
are  made  under  a  secret  process  and  sold  in  bottles  at  the  price  of 
four  and  one-half  dollars  per  half  dozen,  containing  one  gallon. 
The  complainant  has  never  sold  its  bitters  in  bulk  or  otherwise 
than  in  bottles  at  the  price  named.  Upon  application  to  the  de- 
fendant's stores  for  Hostetter's  Bitters,  customers  were  supplied 
with  a  certain  liquor  contained  in  demijohns  at  the  price  of  three 
dollars  per  gallon,  and  in  some  cases,  at  the  request  of  the  cus- 
tomers, the  liquor  was  placed  in  Hostetter  bottles  having  the 
name  Hostetter  blown  into  the  glass,  but  not  bearing  any  label. 
The  defendant's  counsel  claimed  that  there  was  no  infringement 
of  the  complainants'  trade  mark,  because  it  was  not  used  in  the 
sale  of  the  goods,  and  no  attempt  to  deceive  the  purchasers, 
because  the  bitters  were  sold  in  bulk  and  were  not  marked  as 
Hostetter's  Bitters.  It  being  clear,  however,  that  the  goods  were 
advertised  and  were  sold  as  Hostetter's  Bitters,  it  was  held  that 
a  cause  of  action  for  unfair  competition  was  made  out  and  that 
complainant  was  entitled  to  an  injunction  and  to  a  reference  to 
compute  the  damages,  if  any,  which  it  had  suffered  by  the  sale 
of  the  bitters.  (Hostetter  Co.  vs.  Gallagher  Stores,  142,  Fed. 
Rep.,  208.) 


UNFAIR  TRADE  635 


The  extent  to  which  the  imitation  or  copying  of  others'  forms 
of  advertising  is  legitimate  was  lately  considered  in  the  High 
Court  of  Justice,  Chancery  Division,  in  England.  The  plaintiff 
had  been  carrying  on  business  as  a  seedsman  in  London  and  had 
devised  a  plan  for  advertising  his  goods  by  the  insertion  in  a 
large  number  of  papers  of  a  stereotype  advertisement,  containing 
letter  press  and  pictures  of  objects  that  he  offered  as  prizes  for 
the  sale  of  a  certain  number  of  packets  of  his  assorted  seeds. 
The  advertisement  contained  all  the  details  of  the  offer  sur- 
rounded by  a  kind  of  framework  of  cuts  of  objects  given  for 
prizes.  The  advertisement  was  not  copyrighted  nor  registered 
as  a  design. 

In  March,  1906,  the  defendant,  a  general  merchant,  began 
the  sale  of  seeds  by  the  use  of  an  advertisement  practically  the 
same  as  that  of  the  plaintiff,  and  the  terms  were  even  more 
favorable  than  those  of  the  plaintiff.  In  every  other  respect  the 
letter  press,  pictures  and  arrangement  of  the  printing  as  a  whole, 
were  practically  identical  with  those  of  the  plaintiff. 

The  plaintiff  commenced  an  action  for  injunction  to  restrain 
the  defendant  from  advertising  or  representing  the  seeds  sold  by 
them  to  be  the  seeds  of  the  plaintiff,  and  from  causing  it  to  be 
believed  that  the  business  carried  on  by  the  defendant  was  the 
plaintiff's  business.  Upon  a  motion  for  a  preliminary  injunction 
the  plaintiff  produced  no  evidence  to  show  association  in  the 
minds  of  the  public  of  his  form  of  advertisement  with  his  busi- 
ness, or  to  indicate  that  anyone  had  been  deceived  by  the  similar- 
ity in  the  advertisements  into  believing  that  the  defendant's  busi- 
ness was  that  of  the  plaintiff.  The  defendant  on  his  part  admitted 
that  being  impressed  with  the  attractiveness  of  the  plaintiff's  ad- 
vertisement, he  instructed  his  advertising  agent  to  produce  it  with 
the  changes  mentioned. 

The  court  without  hearing  argument  in  behalf  of  the  defendant, 
pronounced  the  suit  an  unwarranted  attempt  to  restrain  rivalry 
in  trade  and  as  going  far  beyond  what  had  even  been  done  in 
any  case.  While  recognizing  the  individuality  of  the  advertise- 
ment orginated  by  the  plaintiff  and  its  effectiveness,  in  the 
inducements  which  it  offered,  to  stimulate  the  sale  of  the  plain- 
tiff's goods,  the  court  said,  because  the  defendant,  being  struck 
by  the  ingenuity  of  the  advertisement,  had  adopted  the  same 
method,  he  did  not  for  that  reason  transgress  any  of  the  plain- 
tiff's rights.  Even  the  copying  of  the  plaintiff's  language  was 
no  wrong.  Without  passing  upon  the  business  morality  of  the 
defendant's  conduct,  the  court  held  that  there  was  nothing  in  it 
that  was  open  to  legal  objection,  no  property  right  of  the  plain- 
tiff being  invaded. 


636  UNFAIR  TRADE 

By  way  of  illustration,  the  court  said  that  the  case  was  exactly 
the  same  as  if  the  defendant  had  opened  a  business  alongside  of 
the  plaintiff,  and  advertised  to  sell  the  same  goods  as  his  neigh- 
bor, but  of  better  quality  and  at  less  price.  To  do  so  might  be  of 
questionable  taste,  but  it  would  be  a  mere  matter  of  rivalry  in 
trade.  No  doubt  the  defendant  was  in  one  sense  injuring  the 
plaintiff's  business,  but  so  far  as  he  was  able  to  do  so  along  proper 
lines,  his  object  was  a  creditable  one.  He  properly  wished  to  get 
the  plaintiff's  business  and  the  plaintiff  wished  to  prevent  him 
from  getting  it.  The  question  was  one  of  method  merely,  and 
the  methods  complained  of  were  not  such  as  to  come  within  the 
censure  of  the  law.  (Wertheimer  vs.  Stewart,  Cooper  &  Co., 
XXIII  Rep.  of  Pat.  etc.,  Cases,  481.) 

DUPLICATION  OF  TELEPHONE  NUMBER 

The  curious  applications,  which  it  is  sometimes  sought  to  make 
of  the  doctrine  of  unfair  competition  are  evidenced  by  a  case  in 
the  Supreme  Court  of  Utah,  decided  in  December,  1906.  The 
plaintiff  Telephone  Co.  for  years  had  used  the  number  888  as 
the  call  for  the  "Trouble  Department."  The  defendant,  a  late 
rival,  established  a  "Trouble  Clerk,"  also  with  the  call  888  for  its 
system.  The  plaintiff  claimed  that  its  subscribers  in  case  of 
difficulty  with  their  service,  sometimes  by  mistake  used  an  instru- 
ment of  the  rival  system  to  give  information  of  the  difficulty,  and 
because  of  the  similarity  in  the  calls  for  the  corresponding  de- 
partments of  the  two  companies,  the  information  went  to  the 
complaint  department  of  its  rival  instead  of  its  own ;  that  upon 
receipt  of  such  information,  the  defendant  sent  solicitors  to  the 
subscriber,  to  induce  him  to  change  his  telephone  and  adopt  that 
of  the  defendant.  The  court,  however,  held  that  such  instances 
if  they  occurred,  were  due  to  the  carelessness  of  the  subscriber 
in  using  a  telephone  of  the  wrong  system,  and  the  judgment  dis- 
missing the  complaint  was  affirmed.  The  court  expressed  its 
views  of  the  controversy  in  the  following  language : 

"While  it  may  be  that  the  respondents  do  not,  in  all  things, 
conform  to  the  Golden  Rule  in  conducting  its  business,  we  are 
not  convinced  that  it  violates  any  legal  or  equitable  rules.  In 
such  event  an  appeal  should  be  made  to  the  moral  rather  than 
the  legal  code.  Modern  business  seems  not  to  be  conducted 
strictly  in  accordance  with  the  moral  code,  and  if  we  assumed  the 
authority  to  issue  an  injunction  every  time  we  thought  this  code 
was  being  violated,  it  would  not  be  long  before  there  would  be 
no  business  transacted,  except  court  business,  and  that  would 
continue  not  so  much  for  the  reason  that  it  conformed  to  the 
code,  as  it  would,  as  a  means  to  direct,  regulate  and  control  all 
business  affairs."  (Rocky  Mt.  Bell  Tel.  Co.  vs.  Utah  Ind.  Tel. 
Co.,  88  Pac.  Rep.,  26.) 


UNFAIR  TRADE  637 

MISUSE   OF   ADVERTISEMENTS 

In  the  Special  Term  of  the  Supreme  Court  in  Brooklyn,  Justice 
Maddox  lately  had  occasion  to  pass  upon  a  form  of  unfair  com- 
petition, which  we  do  not  recall  having  seen  the  subject  of  prior 
adjudication.  The  Kellogg  Toasted  Corn-flake  Co.  widely  ad- 
vertised the  picture  of  a  young  lady  combined  with  the  admoni- 
tion "Wink  at  the  Grocer  and  see  what  you  will  get.  K.  T.  C." 
There  was  nothing  in  the  advertisements  to  show  to  what  goods 
they  were  meant  to  refer,  nor  to  indicate  the  name  of  the  manu- 
facturer from  whom  the  goods  emanated.  They  were  meant 
merely  to  arouse  the  public  curiosity  and  attract  attention  to  later 
advertisements  that  should  disclose  the  goods  advertised  and  the 
manufacturer. 

Before  the  Kellogg  Co.  had,  however,  issued  their  second  ad- 
vertisements and  while  the  minds  of  the  public  were  in  the  condi- 
tion of  aroused  curiosity  that  was  excited  by  the  preliminary 
notices,  the  American  Rice  Co.  issued  advertisements,  the  pur- 
port of  which  was  such  as  to  cause  the  reader  to  believe  that  the 
American  Rice  Co.  was  responsible  for  the  first  display  and  that 
its  goods  were  the  ones  meant  to  be  advertised  thereby. 

Thereupon  the  Kellogg  Co.  brought  suit  to  restrain  the  use 
of  these  advertisements,  on  the  ground  of  unfair  competition,  in 
that  the  defendant  was  misappropriating  the  good  will  created  by 
the  plaintiff  and  inducing  the  public  to  buy  its  goods  referred  to 
in  the  plaintiff's  advertising.  Justice  Maddox  granted  a  pre- 
liminary injunction,  taking  the  view  that  the  action  of  the  de- 
fendant in  appropriating  the  benefit  of  the  plaintiff's  advertising 
was  an  actionable  wrong. 

The  courts  have  heretofore  granted  injunctions  to  restrain 
such  acts  as  cause  or  are  calculated  to  cause  a  purchaser  familiar 
with  one  brand  of  goods,  and  who  seeks  to  procure  more  of  the 
goods  he  has  had  before,  from  being  misled  into  buying  another 
brand,  believing  it  to  be  the  brand  he  seeks.  This  was  the  orig- 
inal application  of  the  theory  of  unfair  competition,  and  presup- 
posed a  familiarity  on  the  part  of  the  purchaser  with  the  goods 
he  sought  to  purchase. 

The  doctrine  was  advanced  in  liberality  when  the  courts  came 
to  take  account  of  the  purchaser  who  had  never  seen  the  goods 
themselves,  but  had  merely  been  made  familiar  with  them  by 
advertisements,  or  by  the  reputation  which  they  had  among  those 
who  used  them,  and  whose  acquaintance  with  the  goods  was 
limited  to  the  name,  or  mark,  or  symbol  by  which  the  goods 
were  commonly  known.  It  has  long  been  recognized  that  the 
manufacturer  is  entitled  to  be  protected  against  the  deception  of 
this  purchaser  as  well  as  against  the  deception  of  him  who  had 
previously  bought  and  used  the  goods. 

The  foregoing  case  carries  the  doctrine  to  a  length  which  does 


638  UNFAIR  TRADE 

not  .appear  illogical  but  is  somewhat  startling",  as  it  recognizes 
the  right  of  the  manufacturer  to  be  secured  against  the  deception 
of  a  prospective  purchaser  who  never  used  the  goods  before, 
never  saw  them,  and  never  heard  of  them,  either  by  reputation 
or  through  advertisements,  but  who  had  merely  had  his  curiosity 
excited  by  an  advertisement  which  he  is  led  to  believe  was  the 
advertisement  of  a  concern  other  than  that  which  in  fact 
issued  it. 

If  this  decision  is  to  be  sustained,  there  can  be  nothing  in  the 
fact  that  in  this  particular  instance  the  goods  sold  by  the  two 
parties  were  of  a  similar  character.  It  cannot  be  seen  why  the 
reasoning  would  not  equally  apply  had  the  American  Rice  Co. 
seized  the  opportunity  to  advertise  a  pickle,  or  a  brand  of  tea,  a 
cigar  or  a  rat  poison,  instead  of  a  cereal,  in  a  measure  similar  to 
"Kellogg's  Toasted  Cornflakes." 

USE  OF  ONE'S  OWN  NAME 

The  Circuit  Court  of  the  United  States  for  the  Western  Dis- 
trict of  Pennsylvania  on  July  20,  1906,  awarded  a  somewhat  too 
sweeping  injunction  against  the  right  of  an  individual  to  make 
use  of  his  own  name  in  business.  The  complainant  and  its 
predecessors  were  for  many  years  engaged  in  the  manufacture 
of  artificial  legs,  having  built  up  a  large  business  and  acquired  a 
valuable  good  will  for  the  article.  The  evidence  clearly  showed 
that  their  goods  were  commonly  known  under  the  name  of 
"Rowley's."  The  defendant,  a  brother  of  the  originator  of  the 
business,  had  been  in  the  employ  of  the  complainant  and  was 
sent,  in  1904,  to  open  an  agency  for  the  complainant  in  Pitts- 
burg.  He  remained  in  charge  of  the  agency  until  April,  1905, 
when  his  agency  was  terminated,  and  thereupon,  he  opened  an 
establishment  himself  in  Pittsburg  and  began  the  manufacture 
and  sale  of  artificial  limbs  on  his  own  account.  The  proof 
showed  that  the  defendant  clearly  appreciated  the  value  of  the 
name  in  connection  with  the  business  and  knew  that  the  pur- 
chasers of  such  articles  were  often  ignorant  and  inexperienced 
and  could  readily  be  deceived  as  to  the  identity  of  the  goods 
which  they  were  getting.  Instances  of  actual  and  intentional 
deception  by  the  defendant  of  complainant's  prospective  cus- 
tomers were  shown. 

The  court  properly  said  that  if  the  defendant's  name  were 
not  Rowley  no  court  for  a  moment  would  permit  him  to  use  that 
name,  which  had  already  gained  a  valuable  trade  significance 
as  designating  the  goods  of  another  maker.  When  the  fraudu- 
lent purpose  to  filch  the  trade  of  another  is  shown,  the  fact  that 
it  is  attempted  under  the  guise  of  using  one's  own  name  does 
not  make  it  any  the  less  wrong.  As  an  abstract  proposition,  the 
court  said,  every  person  has  the  right  to  use  his  own  name,  but 
when  the  use  of  such  name  is  but  a  cloak  to  cover  an  intended 


UNFAIR  TRADE  639 

fraud  upon  the  rights  of  others,  the  wrong-doer  has  himself  and 
not  the  law  to  blame  for  placing  a  limitation  upon  his  right  to 
use  that  name.  From  these  principles  the  court  concluded  that 
nothing  short  of  a  total  prohibition  of  the  name  "Rowley"  in 
connection  with  the  manufacture  and  sale  of  artificial  limbs 
would  secure  to  the  complainant  that  complete  protection  and 
preservation  of  its  property  and  its  trade  name  and  good  will,  to 
which  under  the  law  it  was  entitled.  (J.  F.  Rowley  Co.  vs. 
Rowley,  154  Fed.  Rep.,  744.) 

It  is  hardly  necessary  to  point  out  that  the  scope  of  this  in- 
junction is  broader  than  the  principle  laid  down  by  the  United 
States  Supreme  Court  in  the  Remington  case,  which  does  not 
appear  to  have  had  the  consideration  of  the  court  in  this  instance 
and  that  the  injunction  should  have  been  limited  in  scope  to 
enjoining  defendant  from  the  use  of  his  name  in  such  manner 
as  to  deceive.  The  use  of  his  own  name  in  any  form  whatever 
can  not  properly  be  enjoined.  (Howe  Scale  Co.  vs.  Wyckoff 
Seamans  &  Benedict.) 

IN  TITLE  OF  A  PERIODICAL 

Upon  a  motion  for  a  preliminary  injunction,  made  before  the 
Special  Term  of  the  Supreme  Court  in  the  City  of  New  York, 
in  December,  1908,  an  attempt  was  made  by  the  publisher  of  a 
periodical  known  as  "The  Motor  Boat"  to  forestall  the  issuance 
of  a  rival  sheet  under  a  similar  title.  The  plaintiff's  periodical 
has  been  published  since  the  year  1904.  The  defendant  had 
announced  that  it  was  about  to  begin  the  publication  of  a  maga- 
zine under  the  name  "Motor  Boating"  or  "Motor  Boat  Maga- 
zine." Its  announcements  were  perfectly  clear  and  emphatic  in 
showing  that  its  publication  was  an  entirely  new  one,  about  to 
appear  for  the  first  time.  The  coloring  and  general  design  of 
the  covers  upon  the  publications  were  so  different  that  one  could 
not  be  mistaken  for  the  other.  The  court  took  the  view  that  the 
expression  "Motor  Boat"  had  come  into  general  use,  even  prior 
to  the  year  1904,  to  designate  boats  propelled  by  motors,  and 
that  there  was  nothing  in  the  facts  or  circumstances  which  could 
justify  any  claim  on  the  part  of  the  plaintiff  to  monopolize  these 
words  for  its  publication,  but,  so  long  as  the  defendant  made  no 
unfair  use  of  them  and  did  not  cause  its  publication  to  be  mis- 
taken for  the  plaintiff's,  the  plaintiff  was  without  any  cause  to 
complain.  (The  Motor  Boat  Publishing  Co.  vs.  The  Motor  Boat 
Co.,  N.  Y.  Law  Journal,  December,  1907.) 

THE  "VELVET  GRIP"  LITIGATION 

The  manufacturers  of  the  "Velvet  Grip"  hose  supporter  have 
been  engaged  in  some  very  interesting  litigation,  involving  a 
peculiar  instance  of  unfair  competition  in  the  sale  of  goods  made 


640  UNFAIR  TRADE 

in  imitation  of  their  own.  It  appears  that  a  prominent  feature 
of  the  articles  manufactured  by  them  is  a  moulded  rubber  button, 
to  the  use  of  which  their  article  owes  its  superiority.  Several 
parties  have  lately  found  it  worth  while  to  imitate  these  articles, 
using  a  wooden  button  painted  in  a  greyish  color,  to  imitate 
rubber,  in  such  a  way  that  it  is  possible  for  them  to  be  passed 
off  as  the  genuine  "Velvet  Grip"  rubber  button  hose  supporter. 
The  Circuit  Court  of  the  United  States  for  the  District  of  Massa- 
chusetts, in  October,  1907,  granted  a  preliminary  injunction 
against  one  of  these  inf ringers.  (George  Frost  Co.  vs.  Estes  & 
Sons,  156  Fed.  Rep.,  677.) 

In  another  case  in  the  Circuit  Court  of  the  United  States  for 
the  Southern  District  of  New  York,  Judge  Lacombe  has  granted 
an  order  in  terms  directing  that,  should  the  defendant,  pending 
the  final  hearing  in  the  suit,  continue  to  sell  the  hose  supporters 
with  the  wooden  buttons,  made  in  imitation  of  rubber  as  shown 
in  the  exhibits,  he  must  affix  a  notice  of  reasonable  proportions 
and  so  as  to  be  readily  seen  upon  the  boxes,  stating  that  the 
buttons  are  made  of  wood. 

In  the  third  case  against  a  manufacturer  of  hose  supporters  in 
New  York  City,  we  are  informed  that  a  decree  for  an  injunction 
was  taken  by  consent.  A  fourth  suit  in  the  Circuit  Court  of  the 
United  States  for  the  Southern  District  of  New  York  was  de- 
cided March  6,  1908,  on  motion  for  preliminary  injunction,  such 
injunction  being  granted — 

"*  *  *  enjoining  and  restraining  the  defendants  until  the 
further  order  of  this  court  from  directly  or  indirectly  making  or 
selling  any  garters  or  hose  supporters  with  wood  buttons  painted 
or  otherwise  artificially  colored  in  imitation  of  rubber  buttons." 

The  line  of  decisions,  mentioned  above,  is  one  of  extreme  inter- 
est. Although  the  facts  involved  are  novel,  nevertheless,  the 
rights  of  the  parties  appear  to  be  quite  clearly  defined.  Inas- 
much as  the  rubber  button  is  a  feature  of  the  genuine  article  to 
which  principally  it  owes  its  value,  while  the  painted  wooden  but- 
ton is  a  clear  fraud,  deliberately  designed  to  imitate  the  other 
and  to  profit  by  the  business  built  up  by  the  complainant,  and 
as  «it  can  be  shown  that  in  many  instances,  by  reason  of  the  imita- 
tion of  this  particular  feature  of  the  article,  the  imitative  goods 
have  been  passed  off  on  intending  purchasers  as  genuine,  no 
question  should  remain  as  to  the  rights  of  the  plaintiff  to  in- 
junctive  relief. 


The  action  of  the  government  of  British  Columbia  with  respect 
to  the  name  of  a  city  registered  under  the  law  of  that  province, 
is  of  interest  because  of  the  principles  upon  which  it  is  pro- 
ceeded, analogous  to  those  followed  in  cases  of  unfair  competi- 
tion. 


UNFAIR  TRADE  641 

The  Grand  Trunk  Railroad  adopted  the  name  Prince  Rupert 
as  that  of  its  terminal  city,  but  did  not  register  it  or  otherwise 
protect  it.  Thereafter  a  party  who  had  secured  a  town  site 
elsewhere  applied  the  same  name  to  his  town  and  registered  it. 
The  railroad  company  then  applied  to  the  provincial  government, 
setting  forth  that  the  name  had  become  extensively  known  as  the 
name  of  its  terminal  city,  and  that  intending  purchasers  of  real 
estate  might  be  misled  into  believing  that  the  other  city  was  in 
fact  the  terminal  city  of  the  railroad  and  thus  defrauded.  The 
provincial  government,  accepting  this  view  of  the  case,  ordered 
that  the  name  of  the  later  town  be  cancelled.  (Trade  Mark 
Record,  1908,  p.  253.) 

FRAUDULENT  INTENT 

In  an  action  by  the  publishers  of  the  periodical  known  as 
"Machinery,"  to  enjoin  the  use  of  the  title  "Southern  Machinery" 
upon  another  and  rival  periodical,  it  has  been  held  by  the  United 
States  Circuit  Court  of  Appeals,  Fifth  Circuit,  that  a  complaint 
\vas  insufficient,  which  failed  to  allege  that  the  name  of  the  de- 
fendant's publication  was  used  with  intent  to  deceive  the  public. 
An  allegation  that  the  name  was  'calculated  to  deceive"  is  insuf- 
ficient. A  demurrer  to  the  bill  of  complaint  was  sustained.  (In- 
dustrial Press  vs.  Smith  Publishing  Co.,  164  Fed.  Rep.,  p.  842.) 

SALE  OF  MARKED  BOTTLES 

In  the  fall  of  1909  the  Superior  Court  of  Cook  County,  Illinois, 
granted  an  injunction  upon  the  joint  suit  of  a  large  number 
of  bottling  houses,  against  a  firm  of  dealers  in  empty  bottles, 
enjoining  the  latter  from  procuring,  dealing  in  or  selling  any  of 
the  bottles  or  syphons  of  the  complainants.  The  complainants 
sold  their  goods  in  bottles  or  syphons  which  bore  their  several 
trade  marks,  together  with  the  words  "This  bottle  is  never  sold" 
or  the  equivalent  thereof,  the  mark  or  words  being  blown  in,  or 
stamped  upon,  the  bottles.  It  was  a  condition  of  every  sale  of 
goods,  as  well  as  the  custom  of  the  trade  that  these  bottles,  when 
empty,  should  be  returned  to  the  bottler.  The  contents  alone 
was  sold  and  that  at  a  price  very  much  less  than  the  cost  of 
manufacturing  the  bottles. 

The  defendants  had  been  acquiring  in  some  way,  the  bottles 
of  complainants  and  selling  them  to  dealers  throughout  the 
country  at  a  low  nrice,  leading  the  latter,  in  the  first  instance, 
to  believe  that  they  were  purchasing  plain  bottles.  When,  how- 
ever, they  received  the  bottles  marked  with  complainants'  marks, 
it  had  been  found  that  thev  used  them  for  the  sale  of  their 
own  products,  thereby  prejudicing  the  complainants  and  injuring 
their  trade.  (American  Bottler,  Nov.  15,  1909.) 

41 


.  642  UNFAIR  TRADE 

NAME  OF  HOTEL 

That  the  name  by  which  an  established  hotel  is  known  will  be 
protected  against  the  use  of  a  similar  name  by  a  competing  hotel 
in  the  same  neighborhood,  has  been  declared  by  the  Supreme 
Court  in  the  State  of  Washington. 

The  Hotel  St.  Francis  in  the  City  of  Seattle  had  been  estab- 
lished and  run  under  that  name  since  the  year  1905.  It  was  a 
family  hotel  and  did  not  make  a  specialty  of  transient  trade, 
although  it  did  accommodate  transient  guests.  It  was  a  com- 
paratively small  hotel  of  forty  rooms  and  was  of  the  class  com- 
monly known  as  a  boarding  house. 

In  the  year  1907,  the  defendant  established  the  St.  Francis 
Hotel  about  four  blocks  from  the  plaintiff's  house.  This  was  a 
large  brick  building  of  one  hundred  and  seventy-eight  rooms  and 
equipped  in  all  respects  as  a  modern  transient  hotel.  The  ac- 
commodations offered  were,  as  compared  with  the  complainant's 
hotel,  quite  expensive. 

The  trial  court  found  as  a  fact  that  the  defendant,  at  the  time 
of  opening  its  hotel,  had  never  heard  of  the  plaintiff's  hotel  and 
that  the  defendant  was,  therefore,  entirely  innocent  of  any  wrong- 
ful intent,  that  the  defendant  had  never,  at  any  time,  attempted 
to  attract  the  plaintiff's  patronage,  or  to  mislead  the  public  into 
believing  that  their  hotel  was  that  of  the  latter,  it  was  further 
found  that  considerable  confusion  between  the  hotels  had  arisen, 
the  plaintiff  particularly  being  the  recipient  of  many  messages 
and  letters  intended  for  defendant's  hotel  and  receiving  also 
trunks,  supplies  arid  other  articles  sent  to  the  latter.  To  avoid 
confusion  it  had  been  necessary  for  the  plaintiff  to  add  the  street 
address  of  his  house  in  giving  any  order  or  instruction. 

The  fact  that  the  defendant  had  been  free  from  any  intent  to 
trespass  upon  the  plaintiff's  rights,  together  with  the  difference 
in  the  character  of  the  two  hotels,  seems  to  have  impressed  the 
trial  court,  which  dismissed  the  complaint.  This  decision,  how- 
ever, was  reversed  by  the  Supreme  Court  which  directed  an  in- 
junction in  favor  of  the  plaintiff,  holding  that  the  question  of 
intent  was  immaterial,  as  was  also  the  question  of  whether  or  not 
the  defendant  had  any  knowledge  of  the  existence  of  the  plain- 
tiff's house;  that  inasmuch  as  the  two  houses  were  competitors 
to  a  greater  or  less  degree,  were  engaged  in  the  same  business  in 
the  same  locality,  and  much  confusion  had  resulted  from  the 
similarity  of  names,  a  case  for  injunctive  relief  had  been  made 
out.  (Martcll  vs.  St.  Francis  Hotel  Co.,  98  Pac.  Rep.,  1116.) 

USE  OF  NAME 

The  manufacturer  of  the  well  known  "Ideal"  fountain  pen  has 
lately  had  occasion  to  litigate  the  question  of  the  right  to  use  the 
mrne  "Waterman,"  as  applied  to  this  article.  Arthur  A.  Water- 


UNFAIR  TRADE  643 

man  was  formerly  in  the  employ  of  the  complainant  L.  E.  Water- 
man Co.,  but  in  1898  formed  a  copartnership  for  the  manu- 
facture of  fountain  pens  under  the  name  of  "A.  A.  Waterman 
Pen  Co."  L.  E.  Waterman  Co.  then  brought  suit  against  the 
copartnership  in  the  New  York  Supreme  Court,  and  the  defend- 
ant was  enjoined  from  using  a  corporate  name  containing  the 
word  "Waterman,"  but  was  not  enjoined  from  indicating  that 
the  fountain  pens  made  by  them  were  made  or  sold  by  Arthur 
A.  Waterman  &  Co.  or  A.  A.  Waterman  &  Co.  The  use  of  the 
name  has  been  continued  by  successive  partnerships  ever  since. 
Suit  was  lately  brought  in  the  Circuit  Court  of  the  United  States 
against  the  Modern  Pen  Co.,  a  selling  agent  of  the  firm  of  A.  A. 
Waterman  &  Co.,  to  enjoin  the  sale  of  pens  made  by  the  latter 
company  as  'Waterman"  pens,  and  likewise  to  enjoin  the  use. of 
the  complainant's  trade  mark  "Ideal."  A  preliminary  injunction 
was  granted,  from  which  an  appeal  was  taken.  The  Circuit 
Court  of  Appeals  holds  that  the  defendant  was  properly  enjoined 
from  infringing  upon  the  trade  mark  "Ideal"  and  also  from  the 
use  of  the  name  "Waterman"  alone,  but  that  the  question  of  the 
n°"ht  to  use  the  firm  name  of  A.  A.  Waterman  Pen  Co.  was 
properly  left  as  fixed  by  the  earlier  litigation.  (L.  E.  Waterman 
Pen  Co.  vs.  Modern  Pen  Co.,  183,  O.  G.,  118.) 

COPYING  OF  CATALOGS 

The  Circuit  Court  for  the  District  of  Minnesota  holds  that  the 
copying  by  one  firm  in  its  catalog  of  the  cuts  used  by  a  com- 
peting firm  to  illustrate  the  goods  which  it  offers  for  sale,  is  not 
unfair  competition.  Both  parties  were  engaged  in  the  manufac- 
ture and  sale  of  statuary  and  other  articles  of  decoration  of  a 
religious  character.  The  plaintiff  prepared  and  issued  a  trade 
catalog  of  its  statuary  and  other  articles  at  considerable  expense, 
portions  of  which  the  defendant  reproduced  exactly  without  the 
complainant's  permission,  using  the  illustration  in  its  own  catalog 
as  a  means  of  selling  its  goods  of  the  like  character. 

The  complainant's  motion  for  a  preliminary  injunction  was 
based  upon  two  grounds,  first,  unfair  competition,  and  secondly, 
copyright  infringement.  In  so  far  as  concerned  the  first  aspect 
of  the  motion,  it  was  denie'd.  It  will  be  noticed  that  the  alleged 
unfair  competition  in  this  instance  consisted  not  in  the  reproduc- 
tion or  copying  of  the  articles  themselves  offered  for  sale,  but, 
merely  of  the  catalogs  used  for  the  advertising  of  the  merchan- 
dise. In  view  of  the  frequency  with  which  this  form  of  compe- 
tition is  to  be  met,  the  decision  is  an  important  one.  It  is  the 
first,  so  far  as  we  know,  that  passes  upon  the  point.  (Da  Prato 
Statuary  Co.  vs.  Giuliani  Statuary  Co.,  189,  Fed.  Rep.,  90.) 

TRADE   NAMES 

The  owner  of  three  stores  fronting  on  the  boardwalk  at 
Atlantic  City,  each  conducted  under  the  trade  name  "London 


644  UNFAIR  TKADK 

Shop,"  recently  sought  to  enjoin  the  use  of  another  of  the 
trade  name  "Page  of  London"  on  a  store  devoted  to  the  sale 
of  s-imilar  goods,  alleging  that  confusion  had  resulted  and  would 
result.  There  being  no  imitation  of  the  appearance  or  dressing 
of  plaintiff's  place  of  business,  the  court  said  that  the  issue 
narrowed  down  to  the  exclusive  use  of  the  name  "London"  and, 
assuming  that  the  complainant  was  free  from  criticism  in  the 
adoption  and  use  of  a  name  which  might  indicate  that  he  sold 
imported  goods,  nevertheless  the  circumstances  did  not  justify 
a  conclusion  that  the  public  would  be  deceived.  There  was 
some  proof  of  actual  confusion,  but  this  confusion  appeared  to 
be  due  rather  to  the  extreme  carelessness  of  the  customers  than 
to  any  similarity  between  the  two  names.  (Rosenthal  vs.  Blatt, 
83  At.  Rep.,  387.) 

THE  RIGHT  OF  AN  ASSOCIATION 

r~ 

A  bill  of  complaint  having  been  drawn  in  behalf  of  an  asso- 
ciation of  cigar  manufacturers  engaged  in  the  manufacture  and 
sale  of  cigars  at  Key  West,  Florida,  to  enjoin  unfair  competi- 
tion by  the  defendant  in  the  sale  of  cigars  not  made  in  Key 
West,  in  packages  so  made  as  to  indicate  that  they  were  made 
there,  a  demurrer  was  interposed  to  the  bill  of  complaint  upon 
the  ground  that  the  association  could  not  be  complainant  in  such 
an  action.  The  demurrer  was  sustained,  the  court  saying  that 
the  bill  set  forth  a  cause  of  action  in  favor  of  the  individual 
members  of  the  association,  but  it  was  not  apparent  how  the 
association  as  such  could  sue.  While  there  is  no  reason  why 
several  complainants  who  seek  the  same  relief  should  not  be 
joined  in  the  said  action,  the  suit  could,  nevertheless,  not  be 
sustained  in  the  name  of  the  organization.  ( Key  West  Cigar 
Mfrs.  Assn.  vs.  Rosenbloom,  171  Fed.  Rep.,  2!H>.) 

TITLE  OF  A  MAGAZINE 

The  Supreme  Court  of  the  State  of  Pennsylvania  has  lately 
rendered  a  decision  of  much  interest  to  publishers  of  periodicals, 
enjoining  the  further  publication  under  that  name  of  a  periodical 
"Philadelphia  Suburban  Life,"  the  complaining  parties  being  the 
publishers  of  "Suburban  Life"  of  New  York.  The  court  found 
that  the  defendant's  magazine  bore  a  striking  resemblance  to  the 
complainant's  in  size,  style,  character  of  its  illustrations,  and 
printed  matter  and  in  the  general  scheme  of  the  title  page  as  well 
as  in  the  similarity  of  names,  appearance  and  subject-matter. 
This,  the  court  held,  was  the  result  of  design  and  not  of  acci- 
dent, with  the  intent  to  gain  an  unfair  advantage  over  the  plain- 
tiff and  to  reap  the  benefit  of  its  years  of  labor  and  skill  and  of 
the  money  expended  by  the  plaintiff  in  introducing  its  maga- 


UNFAIR  TRADE  645 

zine   and  building  up   the  circulation   thereof.      (Printers'   Ink, 
March  2,  1910.) 

COPYING  ADVERTISEMENTS 

Two  decisions  of  the  special  term  of  the  New  York  Supreme 
Court  held  in  the  City  of  New  York  during  the  month  of 
March,  passed  upon  interesting  phases  of  the  general  subject 
of  unfair  competition. 

In  the  first  of  these  cases,  the  plaintiff  was  one  Benjamin  H. 
Kaufman,  who,  during  eight  years,  has  been  engaged  in  the 
sale  of  hats  in  the  city  of  New  York  and  other  eastern  cities. 
He  began  in  a  single  store,  and  now  has  seventeen  in  New 
York,  and  in  other  cities.  He  has  uniformly  sold  his  hats  at  a 
price  of  one  and  a  half  dollars,  and  has  designated  his  wares 
as  "Kaufman  Hats."  usually  with  the  figures  "$1.50"  in  con- 
nection therewith.  The  defendant,  Samuel  Kaufman,  had  lately 
opened  a  hat  store  in  New  York,  placing  upon  his  premises  a 
sign  reading  "Kaufman  Hats"  and  conspicuously  using  the 
figures  "$1.50"  in  connection  therewith.  In  disposing  of  a 
motion  for  a  preliminary  injunction,  the  court  said,  the  prin- 
ciple is  well  established  that  a  man  must  use  his  own  name 
honestly  and  not  as  a  means  of  pirating  upon  the  good  will 
and  reputation  of  a  rival.  In  this  case,  it  was  held  that  the 
defendant  was  unfairly  using  his  name  to  steal  the  plaintiff's 
trade,  luring  the  customer  into  his  shop  by  the  unfair  use  of  the 
name  and  figures,  which  led  him  to  believe  that  he  was  dealing 
with  the  original  Kaufman.  An  injunction  was  granted  to  enjoin 
the  defendant  from  using  the  figures  "$1.50"  in  connection 
with  the  name  "Kaufman"  on  the  front  of  his  store,  and  in 
general  advertising,  and  to  prevent  his  use  of  the  name  "Kauf- 
man" at  all.  unless  he  prefixed  to  it,  on  the  same  line,  his  first 
name  in  letters  of  equal  size.  (Kaufman  vs.  Kaufman,  N.  Y. 
Law  Journal,  March  15,  1910.) 

In  the  second  case,  an  injunction  was  sought  to  prevent  the 
production  of  a  play  under  the  title  "The  Whirlwind."  The 
plaintiff  took  his  stand  upon  the  bare  fact  that  he  was  the  owner 
of  a  play  of  that  name  which  had  been  produced  twenty  years 
ago.  but  had  never  been  produced  since.  There  was  no  claim 
made,  as,  indeed,  none  could  be  made  that  the  public  was  deceived 
by  the  use  of  the  name,  or  that  the  public,  as  a  matter  of  fact, 
had  any  recollection  of  the  plaintiff's  play  under  that  title. 
Considering  these  facts,  the  court  said  it  could  discover  no  equi- 
table grounds  for  restraining  the  defendants.  (Rosenfeld  vs. 
Shubert,  N.  Y.  Law  Journal,  March  28,  1910.) 

Another  recent  case  has  just  been  decided  by  the  appellate 
division  of  the  New  York  Supreme  Court,  fourth  department. 
The  plaintiffs  were  the  World's  Dispensary  Medical  Association, 


646  UNFAIR  TRADE 

the  proprietors  of  many  remedies  known  as  "Pierce's"  or  "Dr. 
Pierce's"  remedies,  the  name  "Dr.  Pierce"  forming  part  of  the 
name  applied  to  each  of  its  remedies  by  the  plaintiff.  The 
defendant,  although  his  name  was  Pierce,  was  not  a  physician. 
He  put  on  the  market  certain  proprietary  medicines  under 
names,  each  of  which  contained  as  a  prominent  part  thereof,  the 
names  "Pierce"  or  "Dr.  Pierce."  No  direct  evidence  was  given 
that  the  plaintiff's  business  had  been  injuriously  affected  by  the 
defendant's  conduct,  but  the  court  said  that  such  conduct  was 
calculated  on  its  face  to  unlawfully  and  unfairly  interfere  with 
the  plaintiff's  business ;  that  the  defendant's  use  of  his  name  in 
the  manner  indicated  was  fraudulent.  The  defendant  was  en- 
joined from  advertising  or  selling  any  remedies  under  any  name 
having  the  words  "Dr.  Pierce"  or  "Dr.  Pierce's"  as  a  part 
thereof,  or  from  using  the  name  in  that  form  in  his  business, 
and  from  using  the  name  "Pierce"  in  the  advertising  or  selling 
of  such  remedies,  in  any  manner  that  would  be  calculated  or 
designed  to  deceive  or  mislead  the  public  as  to  "the  origin  of  the 
goods. 

PROTECTION  OF  GOOD  WILL 

The  Supreme  Judicial  Court  of  Massachusetts,  has  lately  held 
that,  after  the  sale  of  a  business  and  its  good  will,  no  competing 
business  can  be  set  up  by  the  vendor  in  derogation  of  the  grant 
made  at  the  time  of  sale.  The  Marshall  Engine  Co..  a  New 
Jersey  corporation,  was  engaged  in  the  manufacture  of  the  so- 
called  "Marshall  Perfecting  Engine,"  under  a  patent  issued  in 
1886,  to  one  F.  J.  Marshall.  He  was  the  principal  and  prac- 
tically the  only  factor  in  the  corporation's  business,  and  by  him 
the  patent  and  good  will  of  the  business  connected  therewith, 
together  with  the  trade  name,  had  been  assigned  to  the  corpo- 
ration. This  corporation  was  declared  insolvent  and  passed 
into  the  hands  of  a  receiver  in  1905.  Thereupon  Marshall 
organized  in  Massachusetts  the  New  Marshall  Engine  Co., 
receiving  the  whole  of  its  capital  stock. 

The  court  holds  that  the  act  of  the  defendant,  Marshall,  in 
organizing  a  new  corporation,  and  continuing  in  business  under 
the  name,  interferes  with  the  rights  of  the  earlier  corporation, 
as  the  purchaser  of  the  good  will  sold  to  it  by  .him  at  the  time 
of  the  assignment  of  the  patent.  The  court  calls  attention  to 
the  English  rule,  that  a  competing  business  could  always  be  set 
up  by  one  who  has  sold  his  good  will,  and  the  purchaser  gets 
nothing  more  than  the  right  to  have  the  vendor  refrain  from 
soliciting  business  from  the  customers  of  the  old  firm.  In  Mas- 
sachusetts, however,  it  holds  the  rule  to  be  different,  to  wit,  that 
no  business  can  be  set  up  bv  the  vendor,  which  competes  with 
the  business  sold,  and  thereby  derogates  from  the  grant  of  the 
good  will.  Whether  a  business  so  set  up  by  the  vendor  does 


UNFAIR  TRADE  647 

impair  the  good  will  sold,  is  entirely  a  question  of  fact  depending 
upon  the  circumstances  Thus,  one  who  sells  the  good  will  of  a 
small  grocery  store  in  the  south  of  Boston,  might,  without  doubt, 
set  up  a  similar  store  in  the  north  end  of  the  same  city.  The 
customers  of  such  stores  are  those  living  in  the  immediate 
vicinity.  The  operation  of  another  store  of  the  same  kind,  in 
another  locality,  would  not  affect  the  rights  acquired  by  the  pur- 
chaser of  the  first.  On  the  other  hand,  in  the  case  of  a  business 
which  is  world  wide,  the  protection  accorded  is  necessarily  co- 
extensive with  the  good  will  to  be  protected,  for  there  is  no 
longer  any  question  of  the  right  to  restrain  the  vendor  of  a 
business  from  conducting  a  similar  business  anywhere,  provided 
such  restraint  is  necessary  to  give  to  the  purchaser  all  that  he 
has  bought. 

In  this  case,  the  court  said,  "the  good  will  of  the  business  of 
selling  engines  to  reduce  pulp  to  paper,  is  manifestly  not  depen- 
dent on  the  place  where  it  is  carried  on.  A  paper  manufacturer 
is  not  concerned  with  where  he  buys  his  machinery.  The  busi- 
ness incorporated  and  since  carried  on  by  the  defendant,  Mar- 
shall, being  in  derogation  of  the  assignment  previously  made  by 
him,  it  must  be  enjoined."  (Marshall  Engine  Co.  vs.  New  Mar- 
shall Engine  Co.  89  Northeastern  Rep.,  548.) 

RELATION  TO  PATENT  INFRINGEMENT 

The  United  States  Circuit  Court  for  the  Northern  District  of 
New  York  has  lately  rendered  an  important  decision  upon  de- 
murrer to  a  bill  of  complaint,  alleging  not  only  patent  infringe- 
ment, but  also  unfair  competition  by  the  sale  of  the  defendant's 
goods  so  painted  and  decorated  as  to  closely  imitate  the  appear- 
ance of  the  complainant's.  The  suit  in  question  had  to  do  with  a 
flexible  runner  for  sleds,  manufactured  under  two  patents,  one 
of  which  had  expired  and  the  other  of  which  the  complainant 
alleged  was  being  infringed. 

It  was  claimed  that,  by  the  manner  of  decorating  its  sleds, 
the  defendant  was  rendering  them  so  much  like  the  complain- 
ant's in  appearance  that  they  were  being  confused  with  those 
of  the  latter's  make.  The  court  said  that,  if  the  complainant 
used  a  particular  form  and  ornamentation  upon  a  patented  arti- 
cle, so  that  the  article  came  thereby  to  be  known  and  distin- 
guished as  of  the  complainant's  make,  a  person  who  should  then 
copy  the  form  and  ornamentation  and  pass  off  his  article  as 
that  of  the  other  person's  make,  even  though  he  should  not 
infringe  upon  the  patent,  was  no  less  guilty  of  unfair  competi- 
tion in  trade.  The  court  then  goes  on  to  say  if  it  appears  that 
such  a  distinctive  form  or  ornamentation  has  been  used  in  con- 
nection with  the  sale  of  a  patented  article,  so  that  it  has  come 
to  designate  and  distinguish  the  article  as  that  covered  by  the 
patent,  it  follows  that  the  exclusive  right  to  such  shapes,  forms, 


648  INTERNATIONAL  UNION 

colors  and  ornamentation  expires  with  the  patent  and  the  right 
to  use  them  passes  to  the  public.  In  support  of  this  principle, 
the  court  cites  the  familiar  Singer  case,  which,  however,  does 
not  seem  to  uphold  the  principle  enunciated,  but,  on  the  other 
hand,  to  be  an  authority  to  the  contrary.  This  case  distinctly 
held  that  the  sale  of  a  patented  article  under  the  name  whereby 
it  had  become  known  to  the  public,  could  not  be  prevented  so 
long  as  care  was  taken  to  distinguish  the  articles  so  sold  from 
the  article  made  and  sold  by  the  former  owner  of  the  patent. 
In  many  cases,  it  would  seem  that  the  only  way  in  which  the  one 
article  could  be  so  distinguished  from  the  other,  would  be  by 
the  use  of  a  different  shape,  color  or  style  of  ornamentation  from 
that  used  upon  the  article  as  covered  by  the  patent,  and  that 
unless  the  two  articles  were  differentiated  in  that  way,  a  direct 
violation  of  the  principle  laid  down  in  the  Singer  case  would  be 
involved.  (Allen  vs.  Walton  Wood  &  Metal  Co.,  178  Fed. 
Rep.,  287.) 

INTERNATIONAL  UNION 

States  of  the  Union  for  the  Protection  of  Industrial  Property, 
January  1,  1911. 

PRINCIPAL  UNION. 

(Convention  of  March  20,  1883.) 

Germany,  Hungary, 

Austria,  Italy, 

Belgium,  Japan, 

Brazil,  Mexico, 

Cuba,  Norway, 

Denmark  and  Faroe  Islands,  Netherlands, 
Dominican  Republic,  Dutch  Indies, 

Spain,  Surinam, 

United  States,  Curacao, 

France,  Algeria,  and  Colonies.  Portugal,  with  the  Azores  and 
Great  Britain,  Madeira, 

Australian  Commonwealth,  Servia, 

Ceylon,  Sweden, 

New  Zealand,  Switzerland, 

Trinidad  and  Tobago.  Tunis. 

LIMITED  UNIONS. 
(Arrangements  of  April  14,  1891.) 

1.  Repression  of  False  Indications  of  Origin. 
Brazil,  Great  Britain, 

Cuba,  Portugal, 

Spain,  Switzerland, 

France,  Tunis, 


INIERNATIONAL  UNION  649 

2.  International  Registration  of  Trade  Marks. 

Austria,  Italy, 

Belgium,  Mexico, 

Brazil,  Holland, 

Cuba,  Portugal, 

Spain,  Switzerland, 

France,  Tunis. 
Hungary, 

States  of  the  Union  for  the  Protection  of  Literary  and  Artistic 
Works,  January,  1,  1911. 

(Le  Droit  d'Autcur,  January  15,  1911.) 

Germany,  with  her  protected  Italy, 

territories.  Japan, 

Belgium,  Liberia, 

Denmark,  Luxemburg, 

Spain,  and  colonies.  Monaco, 

France,  with  Algeria  and  Norway, 

colonies,  Sweden, 

Great  Britain,  with  colonies  Switzerland, 

and  possessions,  Tunis. 
Haiti, 


ACTS 

Governing  the  Union  for  the  Protection  of  Industrial  Property 
as  from  September  14th,  1902 


I.     CONVENTION  OF  MARCH  20th,  1883, 

For  the  Protection  of  Industrial  Property,  with  the  modifica- 
tions and  additions  which  have  been  made  by  the 
conferences  at  Madrid  and  Brussels 


CONVENTION  : 

Signature,  March  20th,  1883,  at  Paris. 

Deposition  of  the  ratifications,  June  6th,  1884,  at  Paris. 

Entered  into  force,  July  Gth,  1884. 

RECORDS   RESPECTING   THE   ENDOWMENT   OF   THE    INTER- 
NATIONAL OFFICE: 

Signature,  April  15th,  1891,  at  Madrid. 

Deposition  of  ratifications,  June  15th,  1892,  at  Madrid. 

Entered  into  force,  January  1st,  1898. 


650  INTERNATIONAL  UNION 

ADDITIONAL  CHARTER: 

Signature,  December  14th,  1900,  at  Brussels. 
Deposition  of  ratifications   (close  of  the  proceedings), 

June  14th,  1902,  at  Brussels. 
Entered  into  force,  September  1 1th,  1902. 


List  of  the  States  That  Are  Members  of  the  Union 

Since  the  Convention  went  into  force:  Belgium,  Brazil,  Spain, 
France  with  Algiers  and  Colonies,  Great  Britain,  Italy,  Nether- 
lands, Portugal  with  Azores  and  Madeira,  Servia,  Switzerland, 
Tunis,  Norway,  from  July  1st,  1885;  Sweden,  from  July  1st, 
1885;  United  States  of  America,  from  May  30th,  1887;  Dutch 
Indies,  from  October  1st,  1888 ;  Surinam  and  Curacao,  from  July 
1st,  1890;  Domingo  (Republic),  from  July  llth,  1890;  New 
Zealand  and  Queensland,  from  September  7th,  1891,  Denmark 
and  Faroe  Islands,  from  October  1st,  1894;  Japan,  from  July 
l">th,  1899;  Germany,  from  May  1st,  1903;  Mexico,  from  Sep- 
tember 7th,  1903;  Cuba,  from  November  17th,  1904;  Australia, 
from  January  1st,  1909;  Austria,  from  January  1st,  1909 ;  Ceylon, 
from  January  1st,  1909;  Hungary,  from  January  l^t,  1909;  Trin- 
idad and  Tobago,  from  January  .1st,  1909. 

His  Majesty  the  King  of  the  Belgians,  His  Majesty  the  Em- 
peror of  Brazil,  His  Majesty  the  King  of  Spain,  the  President 
of  the  French  Republic,  the  President  of  the  Republic  of  Guate- 
mala, His  Majesty  the  King  of  Italv,  His  Majesty  the  King  of 
the  Netherlands,  His  Majesty  the  King  of  Portugal  and  of  the 
Algraves,  the  President  of  the  Republic  of  Salvador,  His  Majesty 
the  King  of  Servia  and  the  Federal  Council  of  S\viss  Confedera- 
tion. 

Equally  animated  by  the  desire  to  assure,  by  mutual  consent, 
a  complete  and  effective  protection  of  the  industries  and  com- 
merce of  the  natives  of  their  respective  states  and  to  contribute 
towards  the  guarantee  of  the  rights  of  inventors  and  to  the  integ- 
rity of  commercial  transactions,  have  decided  to  form  a  conven- 
tion for  that  purpose  and  have  appointed  as  their  plenipoten- 
tiaries, viz. : 
********** 

Who,  after  having  communicated  to  each  other  their  respective 
full  powers,  which  were  found  to  be  in  due  and  proper  form, 
agreed  upon  the  following  articles : 

Article  1. — The  governments  of  Belgium,  Brazil.  Spain, 
France,  Guatemala,  Italy,  the  Netherlands.  Portugal,  Salvador, 
Servia  and  Switzerland  have  formed  a  Union  for  the  Protection 
of  Industrial  Property. 

Article  2. — The  subjects  or  citizens  of  each  of  the  contracting 


INTERNATIONAL  UNION  651 

states  will  enjoy  in  all  the  other  states  of  the  Union,  as  regards 
patents  of  invention,  designs  or  industrial  models,  trade  or  man- 
ufacturing marks  and  the  commercial  name,  the  advantages 
which  the  respective  laws  at  present  allow  or  may  allow  here- 
after to  the  natives.  Consequently  they  will  enjoy  the  same  pro- 
tection as  the  latter  and  the  same  legal  remedy  against  any  prej- 
udice that  may  be  caused  to  their  rights,  under  reserve  of  their 
fulfilling  the  formalities  and  conditions,  to  which  the  natives  are 
subjected  by  the  interior  legislation  of  each  state. 

Article  3. — Subjects  or  citizens  of  states  that  do  not  form  part 
of  the  Union,  who  are  domiciled  in  or  have  actual  and  bona  fide 
industrial  and  commercial  establishments  in  the  territory  of  one 
of  the  states  of  the  Union,  are  assimilated  with  the  subjects  or 
citizens  of  the  contracting  state. 

Article  4. — Whosoever  has  in  regular  form  made  an  applica- 
tion for  a  patent  of  invention,  or  the  registration  of  a  design  or 
industrial  model,  or  of  a  manufacturing  or  trade  mark,  in  one  of 
the  contracting  states,  will  enjoy  a  right  of  priority  during  the 
delays  hereafter  determined,  for  the  purpose  of  making  the  appli- 
cation or  registration  in  the  other  states,  reserving  always  the 
rights  of  third  parties. 

Consequently  the  application  subsequently  made  for  a  patent, 
or  the  said  registrations,  before  the  expiration  of  the  delays, 
hereinafter  mentioned,  can  not  be  invalidated  by  any  facts  that 
have  taken  place  in  the  interval,  say,  especially  any  other  appli- 
cation or  registration,  by  the  publication  of  the  invention  or  the 
working  of  the  same,  by  the  selling  of  copies  of  the  design  or  of 
the  model,  or  of  the  trade  mark. 

The  delays  of  priority  mentioned  above  will  be  twelve  months 
for  patents  of  invention,  four  months  for  designs  or  industrial 
models  and  also  for  manufacturing  and  trade  marks. 

Article  4a. — The  patents  applied  for  in  the  different  contract- 
ing states  by  persons  admitted  to  the  benefits  of  the  convention 
at  the  terms  of  Articles  2  and  3,  will  be  independent  of  the  pat- 
ents obtained  for  the  same  invention  in  the  other  states,  whether 
belonging  to  the  Union  or  not. 

This  stipulation  will  apply  to  patents  existing  already  at  the 
time  the  convention  comes  into  force. 

The  same  will  apply,  in  case  of  new  states  joining  the  Union, 
as  regards  the  existing  patents,  on  both  sides,  at  the  time  of 
joining. 

Article  5. — The  introduction  by  the  patentee  into  the  country 
where  the  patent  has  been  granted,  of  articles  manufactured  in 
any  of  the  states  of  the  Union,  will  not  involve  its  forfeiture. 

Nevertheless,  the  patentee  will  remain  under  the  obligation  of 
working  his  patent  in  accordance  with  the  laws  of  the  country, 
where  he  introduces  the  patented  articles. 

Article  6. — Any  industrial  or  commercial  trade  mark,  regis- 


652  INTERNATIONAL  UNION 

tered  in  a  regular  manner  in  the  country  of  its  origin,  will  be 
admitted  for  registration  and  protected  as  such  in  all  the  other 
countries  of  the  Union. 

The  country  in  which  the  party  registering  the  trade  mark  has 
his  principal  establishment  will  be  considered  the  country  of 
origin. 

If  this  principal  establishment  is  not  located  in  any  of  the 
countries  of  the  Union,  the  country  to  which  the  said  party  be- 
longs will  be  considered  the  country  of  origin. 

The  registration  may  be  refused  in  case  the  object  to  which 
it  has  reference  is  contrary  to  morals  or  public  order. 

Article  7. — The  nature  of  the  product  to  which  the  trade  mark 
is  to  be  affixed  can  in  no  case  form  an  obstacle  to  the  registra- 
tion of  the  trade  mark. 

Article  8. — The  commercial  name  will  be  protected  in  all  the 
countries  of  the  Union,  without  the  obligation  of  registration, 
whether  it  forms  part  of  an  industrial  or  commercial  trade  mark 
or  not. 

Article  9. — Any  product  bearing  illicitly  a  trade  mark  or  a 
commercial  name  may  be  seized  on  importation  into  those  states 
of  the  Union  in  which  this  trade  mark  or  commercial  name  is 
entitled  to  legal  protection. 

The  seizure  will  take  place  at  the  request  either  of  the  proper 
public  officer  or  of  the  interested  party,  in  accordance  with  the 
interior  legislation  of  each  state. 

In  the  states  the  legislation  of  which  does  not  allow  seizure 
on  importation,  this  seizure  may  be  replaced  by  a  prohibition  of 
importation. 

The  authorities  are  not  bound  to  effect  seizure  in  case  of 
transit. 

Article  10. — The  stipulations  of  the  preceding  article  will  be 
applicable  to  any  product  bearing  falsely,  as  indication  of  origin, 
the  name  of  a  definite  locality,  if  this  indication  is  added  to  a 
fictitious  or  borrowed  commercial  name,  with  fraudulent  inten- 
tions. 

As  interested  party  will  be  considered  any  producer,  manufac- 
turer or  merchant,  engaged  in  the  production,  the  manufacture 
or  the  selling  of  the  product,  and  established  either  in  the  locality 
falsely  indicated,  as  place  of  origin,  or  in  the  district  where  this 
locality  is  situated. 

Article  lOa. — Those  belonging  to  the  Convention  (Arts.  2  and 
3)  will  enjoy  in  all  the  states  of  the  Union  the  same  protection 
against  dishonest  competition  as  is  afforded  to  natives. 

Article  11. — The  high  contracting  parties  will  afford  temporary 
protection,  in  accordance  with  the  legislation  of  each  country,  to 
patentable  inventions,  designs  or  industrial  models,  as  well  as  to 
industrial  and  commercial  trade  marks  for  the  products,  which 


INTERNATIONAL  UNION  653 

may  be  shown  at  official  international  exhibitions,  or  those  offi- 
cially recognized  and  organized  on  the  territory  of  one  of  same. 

Article  12. — Each  of  the  high  contracting  parties  undertakes 
to  establish  a  service  of  industrial  protection  and  a  central  depot 
for  communicating  to  the  public  patents  of  inventions,  designs  or 
industrial  models  and  trade  marks. 

Article  13. — An  international  office  will  be  organized  under  the 
title  of  "International  Office  of  the  Union  for  the  Protection  of 
Industrial  Property." 

This  office,  the  expenses  of  which  will  be  borne  by  the  admin- 
istrations of  all  the  contracting  states,  will  be  placed  under  the 
hieti  authority  of  the  Superior  Administration  of  the  Swiss  Con- 
federation and  will  work  under  its  supervision.  Its  powers  will 
be  mutually  determined  between  the  states  of  the  Union. 

Article  14. — The  present  convention  will  be  submitted  to  peri- 
odical revisions,  with  a  view  to  introducing  improvements  of  a 
nature  calculated  to  make  the  system  of  the  Union  more  perfect. 
To  this  effect  the  conferences  will  successively  take  place  in  one 
of  the  contracting  states,  between  the  delegates  of  the  said  states. 

Article  15. — It  is  understood  that  the  high  contracting  par- 
ties reserve  to  themselves,  respectively,  the  right  of  making 
separately  amongst  themselves  private  arrangements  for  the  pro- 
tection of  industrial  property,  provided  that  such  arrangements 
do  not  contravene  in  any  way  against  the  stipulations  of  the 
present  Convention. 

Article  16. — States  that  have  not  taken  part  in  this  Conven- 
tion will  be  admitted  to  membership  at  their  request. 

This  membership  will  be  notified  by  diplomatic  channel  to  the 
government  of  the  Swiss  Confederation  and  by  the  latter  to  all 
the  others. 

It  will  carry  with  it,  by  full  right,  adhesion  to  all  the  clauses 
and  admission  to  all  the  advantages  stipulated  by  the  present 
Convention  and  will  come  into  effect  one  month  after  the  for- 
warding of  the  notification  by  the  Swiss  government  to  the  other 
states  of  the  Union,  unless  some  other  subsequent  date  should 
have  been  stated  by  the  adhering  state. 

Article  17. — The  execution  of  the  mutual  undertakings  con- 
tained in  the  present  Convention  is  subordinated,  as  far  as  may 
be  required,  to  the  fulfilling  of  the  formalities  and  rules  estab- 
lished by  the  constitutional  laws  of  those  of  the  high  contracting 
parties  that  are  bound  to  instigate  their  application,  which  they 
undertake  to  do  with  as  little  delay  as  possible. 

Article  18. — The  present  Convention  will  be  carried  into  effect 
within  a  delay  of  one  month,  commencing  from  the  exchange  of 
the  ratifications,  and  will  remain  in  force  for  an  indefinite  period 
up  to  the  expiration  of  one  year  from  the  day  on  which  notice 
of  its  discontinuance  may  be  given. 

This  notice  of  discontinuance  must  be  addressed  to  the  gov- 


654  INTERNATIONAL  UNION 

•eminent  charged  with  the  receiving  of  adhesions.  It  will  only 
influence  the  state  that  has  given  the  said  notice,  the  Convention 
remaining  in  force  as  regards  the  other  contracting  parties. 

Article  19. — The  present  Convention  will  be  ratified  and  the 
ratifications  exchanged  in  Paris  within  the  delay  of  one  year  at 
the  outside. 

In  witness  whereof  the  respective  plenipotentiaries  have  signed 
it  and  affixed  their  seals. 

PROTOCOL  OF  THE  CLOSE 

At  the  moment  of  proceeding  to  sign  the  concluded  Conven- 
tion of  the  present  date  between  the  governments  of  Belgium, 
Brazil,  Spain,  /  France,  Guatemala,  Italy,  the  Netherlands,  Por- 
tugal, Salvador,  Servia  and  Switzerland,  for  the  protection  of 
industrial  property,  the  undersigned  plenipotentiaries  have  agreed 
upon  as  follows : 

1.  The  words  industrial  property  are  to  be  understood  in  their 
broadest  acceptation,  in  the  sense  that  they  apply  not  only  to  the 
products  of  industry,  properly  speaking,  but  also  to  products  of 
agriculture    (wines,   grain,    fruits,   cattle,   etc.)    and  to   mineral 
products  delivered  to  commerce  (mineral  waters,  etc.). 

2.  Under  the  name  of  patents  of  invention  are  comprised  the 
different  kinds  of  industrial  patents  admitted  by  the  legislations 
of  the  contracting  states,  such  as  patents  of  importation,  patents 
of  improvement,  etc. 

3.  It  is  mentioned  that  the  final  stipulation  of  Article  2  of 
the  Convention  is  in  no  way  prejudicial  to  the  legislation  of  each 
of  the  contracting  states  as  regards  the  procedure  practiced  be- 
fore the  courts  and  the  competency  of  those  courts. 

t3a.  The  patentee,  in  each  country,  can  only  have  his  patent 
forfeited,  on  account  of  its  not  having  been  worked,  after  a 
minimum  delay  of  three  years,  lasting  from  the  application  in  the 
country  in  question,  and  in  case  the  patentee  does  not  justify 
the  causes  of  his  inaction. 

4.  The  first  paragraph  of  Article  G  is  to  be  understood  in  the 
sense  that  no  trade  mark  can  be  excluded  from  protection  in  any 
of  the  states  of  the  Union  by  the   fact  alone  that  it  does  not 
comply  from  the  point  of  view  of  the  signs  of  which  it  is  com- 
posed, with  the  conditions  of  the  legislation  of  that  state,  provided 
it  complies  on  that  point  with  the  legislation  of  the  country  of  its 
origin   and   it  has   been   duly  registered  in   the   latter  country. 
Saving  this  exception,  which  only  concerns  the  form  of  the  mark 
and  under  reserve  of  the  stipulations  of  the  other  articles  of  the 
Convention,  the  interior  legislation  of  each  of  the  states  will  be 
applied  in  each  case. 

In  order  to  avoid  all  false  interpretation,  it  is  understood  that 
the  use  of  public  armorial  bearings  and  insignia  may  be  consid- 


INTERNATIONAL  UNION  655 

ered  as  contrary  to  public  order,  in  the  sense  of  the  final  para- 
graph of  Article  6. 

5.  The  organization  of  the  special  service  of  industrial  prop- 
erty, mentioned  in  Article  12,  will  comprise  as  far  as  possible  the 
publication  in  each  state  of  an  official  periodical  paper. 

6.  The  expenses  of  the  International  Office,  instituted  as  per 
Article   13,   will   be   borne   mutually  by  the  contracting   states. 
They  are  not,  in  any  case,  to  exceed  the  sum  of  sixty  thousand 
francs  per  year. 

In  order  to  determine  the  contributive  portion  of  each  of  the 
states  towards  the  total  sum  of  the  expenses,  the  contracting 
states  and  those  that  will  ultimately  become  members  of  the 
Union,  will  be  divided  into  six  classes,  each  contributing  in  the 
proportion  of  a  certain  number  of  units,  viz. : 

1st  class 25  units      4th  class 10  units 

2d    class 20  units      5th  class 5  units 

3d    class 15  units      6th  class 3  units 

These  coefficients  will  be  multiplied  by  the  number  of  the 
states  of  each  class,  and  the  sum  of  the  products  thus  obtained 
will  supply  the  number  of  units  by  which  the  total  expense  is  to 
be  divided.  The  quotient  will  give  the  amount  of  the  outlay 
unit. 

The  contracting  states  are  classed  as  follows,  in  view  of  the 
division  of  the  expenses : 

1st  class:  France,  Italy.  4th  class:  The  Netherlands. 

2d  class  :  Spain.  5th  class :  Servia. 

(  Belgium,  Brazil,  fith  class :  Guatemala,      Salva- 

3d  class    •<  Portugal,     Switzer-  dor  (1). 

(      land. 

iv~  "• 

The  Swiss  administration  supervises  the  expenses  of  the  Inter- 
national Office,  advances  the  needful  funds  and  makes  up  the 
yearly  account,  which  will  be  forwarded  to  all  the  other  admin- 
istrations. 

The  International  Office  will  centralize  the  information  of 
whatever  nature  with  reference  to  the  protection  of  international 
property  and  will  combine  same  into  general  statistics  to  be  dis- 
tributed to  all  the  administrations.  It .  will  study  the  common 
usefulness  which  interests  the  Union  and  will  draw  up,  with  the 
aid  of  the  documents  which  are  placed  at  its  disposal  by  the  dif- 
ferent administrations,  a  periodical  in  the  French  language  on  the 
questions  concerning  the  object  of  the  Union. 

The  numbers  of  the  periodical,  the  same  as  all  documents 
published  by  the  International  Office,  will  be  distributed  amongst 

(1)  Guatemala  and  Salvador  are  no  longer  Members  of  the  Union.  On  the  other 
hand,  the  States  which  have  become  Members  since  1883,  have  been  ranked  at  their 
request  in  the  following  classes:  Denmark,  4th  class;  Republic  of  Domingo,  6th  class; 
United  States  of  America,  1st  class;  Great  Britain,  1st  class;  Japan,  2nd  class;  Norway, 
4th  class;  Sweden,  3rd  class;  Tunis,  6th  class. 


656  INTERNATIONAL  UNION 

the  administrations  of  the  states  of  the  Union  in  proportion  to 
the  number  of  the  above-mentioned  contributive  units.  Any 
supplementary  copies  and  documents  which  may  be  asked  for, 
either  by  the  said  administrations  or  by  societies  or  individuals, 
will  be  paid  for  apart.  The  International  Office  must  hold  itself 
always  at  the  disposal  of  the  members  of  the  Union,  in  order  to 
supply  to  them  on  the  questions  relating  to  the  international 
service  of  industrial  property,  the  special  information  which  they 
may  require. 

The  administration  of  the  country  where  the  next  conference 
is  to  be  held  will  prepare,  with  the  assistance  of  the  International 
Office,  the  work  of  that  conference. 

The  manager  of  the  International  Office  will  assist  at  the  sit- 
tings of  the  conferences  and  will  take  part  in  the  discussions, 
however,  without  deliberative  vote.  He  will  make  a  yearly  report 
about  his  management,  which  will  be  communicated  to  all  the 
members  of  the  Union. 

The  official  language  of  the  International  Office  will  be  the 
French  language. 

7.  The  present  closing  protocol,  which  will  be  ratified  at  the 
same  time  as  the  convention  concluded  on  this  day's  date,  will 
be  considered  as  forming  an  integral  part  of  this  Convention  and 
will  have  the  same  force,  value  and  duration. 

In  witness  whereof  the  undersigned  plenipotentiaries  have 
drawn  up  this  present  protocol. 

II.     ARRANGEMENT  OF  APRIL  14,  1891 

Concerning  the  International  Registration  of  Commercial  and 

Manufacturing   Trade    Marks   with    the    alterations    and 

additions  made  therein  by  the  Brussels  Conference 


ARRANGEMENT: 

Signature,  April  14th,  1891,  at  Madrid. 

Deposition  of  ratifications,  June  1 5th,  .1892,  at  Madrid. 

Coming  into  force,  July  15th,  1902,  at  Madrid. 
SUPPLEMENTARY  ACT: 

Signature,  December  14th,  1900,  at  Brussels. 

Deposition  of  ratifications   (closure  of  official  report),  June 
14th,  1902,  at  Brussels. 

Coming  into  force,  September  14th,  1902. 


List  of  States  Which  Are  Members  of  the  Restricted  Union 

BELGIUM,  since  the  arrangement  came  into  force. 
SPAIN,  since  the  arrangement  came  into  force. 


INTERNATIONAL  UNION  657 

FRANCE,  with  Algeria  and  colonies,  since  the  arrangement 
came  into  force. 

SWITZERLAND,  since  the  arrangement  came  into  force. 

TUNIS,  since  the  arrangement  came  into  force. 

HOLLAND,  with  the  Dutch  East  Indies,  Surinam  and  Curacao, 
from  March  1st,  1893. 

PORTUGAL,  with  the  Azores  and  Madeira,  from  October  31st, 
1893. 

ITALY,  from  October  15th,  1894. 

BRAZIL,  from  October  3d,  1896. 

The  undersigned  plenipotentiaries  of  the  states  enumerated 
above  and  in  virtue  of  Article  15  of  the  International  Conven- 
tion dated  March  20th,  1883,  for  the  protection  of  industrial 
property,  have  by  mutual  agreement,  subject  to  ratification,  con- 
cluded the  following  arrangement. 

Article  1. — The  subjects  or  citizens  of  each  of  the  contracting 
states  may  insure  in  all  the  other  states  the  protection  of  their 
manufacturing  or  commercial  trade  marks  which  have  been  ac- 
cepted and  deposited  in  the  country  of  their  origin  subject  to  the 
said  marks  being  deposited  at  the  International  Bureau  in  Berne 
through  the  agency  of  the  government  of  the  said  country  of 
origin. 

Article  2. — The  subjects  or  citizens  of  other  states  which  have 
not  joined  in  the  present  arrangement  are  on  the  same  footing 
as  the  subjects  or  citizens  of  the  contracting  states  provided  that 
they,  on  the  territory  of  the  restricted  Union  constituted  by  the 
said  arrangement,  satisfy  the  conditions  set  forth  in  Article  3  of 
the  general  Convention. 

Article  3. — The  International  Bureau  will  at  once  register  the 
marks  deposited  in  accordance  with  Article  1,  and  will  give 
notice  of  such  registration  to  the  contracting  states.  The  marks 
so  registered  will  be  published  in  a  supplement  to  the  Journal 
of  the  International  Bureau  by  means  of  a  block  furnished  by 
the  depositor. 

If  the  deponent  claims  the  color  to  be  a  distinctive  feature  of 
his  mark  he  shall  be  bound : 

1.  To  declare  this  and  to  attach  to  his  deposit  a  description 
in  which  the  color  is  mentioned. 

2.  To  attach  to  his  claim  copies  of  the  said  marks  in  colors, 
which  will  be  attached  to  the  notifications  made  by  the  Inter- 
national Bureau.    The  number  of  tKese  copies  will  be  fixed  by 
the  regulation  as  to  the  manner  of  execution.     In  view  of  the 
publicity  to  be  given  in  the  various  states  to  the  registered  marks 
each  administration  will  receive  gratis   from  the  International 
Bureau  as  many  copies  of  the  above-mentioned  publication  as  it 
may  choose  to  ask  for. 

Article  4. — Dating  from  the  date  of  registration  so  effected  at 
the  International  Bureau  the  protection  in  each  of  the  contracting 

42 


658  INTERNATIONAL  UNION 

states  will  be  just  the  same  as  if  the  mark  had  been  first  deposited 
in  such  state. 

Article  4a. — When  a  mark,  already  deposited  in  one  or  more 
of  the  contracting  states,  has  been  afterwards  registered  at  the 
International  Bureau  in  the  name  of  the  same  holder  or  his  rep- 
resentative, the  international  registration  will  be  considered  as 
substituted  for  the  earlier  national  registrations  without  prejudice 
to  any  rights  acquired  in  connection  with  the  latter. 

Article  5. — In  those  countries  where  the  laws  authorize  it,  the 
^ministrations  to  whom  the  International  Bureau  shall  notify 
the  registration  of  a  mark  shall  be  entitled  to  declare  that  pro- 
tection can  not  be  granted  to  this  mark  in  their  territory.  Such 
refusal  can  not  be  disputed  except  under  the  conditions  applica- 
ble in  virtue  of  the  Convention  of  March  20th,  1883  to  a  mark 
denosited  for  national  registration. 

They  must  exercise  this  power  within  the  period  fixed  by  their 
national  law  and  at  latest,  within  the  year  of  the  notification 
mentioned  in  Article  3,  stating  at  the  same  time  to  the  Inter- 
national Bureau  the  motives  for  their  refusal. 

The  said  declaration  so  notified  to  the  International  Bureau 
"•ill  be  at  once  forwarded  by  the  latter  to  the  administration  of 
the  country  of  origin  and  to  the  owner  of  the  mark.  The  party 
interested  will  have  the  same  means  of  appeal  as  if  the  mark 
had  been  directly  deposited  by  him  in  the  'country  where  protec- 
tion is  refused. 

Article  5a. — The  International  Bureau  will  deliver  to  any  per- 
son making  the  request,  subject  to  a  fee  fixed  by  regulation,  a 
copy  of  the  memoranda  entered  in  the  register  relating  to  any 
particular  mark. 

Article  6. — The  protection  resulting  from  registration  at  the 
International  Bureau  will  last  twenty  years  from  the  date  of 
registration  but  may  not  be  claimed  on  behalf  of  a  mark  no 
longer  under  legal  protection  in  the  country  of  origin. 

Article  7. — Registration  may  always  be  renewed  in  accordance 
with  the  provisions  of  Articles  1  and  3.  Six  months  previous  to 
the  expiration  of  the  period  of  protection  the  International  Bu- 
reau will  give  official  intimation  thereof  to  the  administration  of 
the  country  of  origin  and  the  owner  of  the  mark. 

Article  8. — The  administration  of  the  country  of  origin  will  fix 
at  its  pleasure  and  collect  on  its  own  behalf  a  fee  to  be  claimed 
from  the  owner  of  the  mark  who  asks  for  international  registra- 
tion. To  this  fee  will  be  added  an  international  charge  of  100 
francs  for  the  first  mark  and  50  francs  for  every  other  mark 
deposited  at  the  same  time  by  the  same  owner.  The  annual 
proceeds  of  this  charge  will  be  divided  equally  among  the  con- 
tracting states  through  the  agency  of  the  International  Bureau 
after  deduction  of  the  common  expenses  necessary  for  the  execu- 
tion of  this  agreement. 


INTERNATIONAL  UNION  659 

Article  9. — The  administration  of  the  country  of  origin  will 
notify  to  the  International  Bureau  any  anntilations,  erasures, 
renunciations,  transmissions  and  other  changes,  that  may  take 
place  in  the  ownership  of  the  mark. 

The  International  Bureau  will  register  these  alterations  and 
give  immediate  notice  thereof  in  its  journal  to  the  contracting 
administrations  and  the  public. 

Article  9a. — When  a  mark  entered  in  the  International  Reg- 
ister is  transmitted  to  a  person  settled  in  a  contracting  state  other 
than  the  country  of  origin  of  the  mark,  the  transmission  shall  be 
notified  to  the  International  Bureau  by  the  administration  of  the 
said  country  of  origin.  The  International  Bureau  shall  register 
the  transmission  and  after  receiving  the  assent  of  the  administra- 
tion to  which  the  new  holder  is  subject  it  will  give  notice  thereof 
to  the  other  administrations  and  publish  the  same  in  its  journal. 

It  is  not  the  purpose  of  this  provision  to  modify  the  law  of 
the  contracting  state  which  prohibits  the  transfer  of  the  mark 
unless  accompanied  by  the  simultaneous  cession  of  the  industrial 
or  commercial  concern  whose  products  it  distinguishes. 

No  transmission  will  be  registered  of  any  mark  entered  on  the 
International  Register  if  made  in  favor  of  a  person  not  estab- 
lished in  one  of  the  signatory  countries. 

Article  10. — The  administration  will  settle  by  mutual  agree- 
ment the  details  relating  to  the  execution  of  the  present  arrange- 
ment. 

Article.  11. — The  states  of  the  Union  for  the  protection  of 
industrial  property  which  have  not  taken  part  in  the  present 
arrangement  will  be  allowed  on  their  request  to  join  the  same  in 
the  form  provided  by  Article  16  of  the  Convention  of  March 
20th,  1883,  for  the  protection  of  industrial  property. 

As  soon  as  the  International  Bureau  is  informed  that  a  state 
has  joined  the  present  arrangement  it  will  forward  to  the  admin- 
istration of  such  state  in  conformity  with  Article  3  a  complete 
list  of  the  marks  then  enjoying  international  protection. 

This  list  will  of  itself  ensure  for  the  said  marks  the  benefit  of 
previous  regulations  in  the  territory  of  the  state  so  joining  and 
will  involve  the  delay  of  one  year,  during  which  the  administra- 
tion interested  may  make  the  declaration  provided  in  Article  5. 

Article  12. — The  present  arrangement  will  be  ratified  and  the 
ratifications  of  the  same  exchanged  at  Madrid  within  a  period  of 
six  months  at  latest. 

It  will  come  into  force  in  one  month  from  the  exchange  of 
ratifications  and  shall  have  the  same  force  and  duration  as  the 
Convention  of  March  20th,  1883. 

In  witness  whereof  the  plenipotentiaries  of  the  states  above 
enumerated  have  signed  the  present  arrangement. 


660  INTERNATIONAL  UNION 

III.     REGULATION 

For  the  Execution  of  the  Arrangement  of  April  14,  1891,  Con- 
cerning the  Registration  of  Industrial  or  Commer- 
cial Trade  Marks 

(Text  Approved  by  All  the  Administrations  in  1903.) 

Article  1. — All  requests  for  the  purpose  of  securing  the  inter- 
national registration  of  an  industrial  or  commercial  trade  mark 
in  virtue  of  the  arrangement  of  April  14th,  1891,  revised  Decem- 
ber 14th,  1900,  must  be  addressed  by  the  owner  of  the  mark  to 
the  administration  of  the  country  of  origin  in  the  form  which  the 
latter  may  prescribe. 

The  administration  of  the  country  of  origin  will  fix  at  its 
pleasure  and  collect  a  fee  the  amount  of  which  will  remain  in 
its  possession.  To  this  fee  will  be  added  an  international  charge 
fixed  as  follows : 

1.  In  the  case  of  the  deposit  of  a  single  mark,  one  hun- 
dred francs. 

2.  In  the  case  of  several  deposits,  one  hundred  francs 
for  the  first  mark  and  fifty  francs  for  each  of  the  other 
marks  deposited  at  the  same  time  by  the  same  owner. 

Article  2. — After  having  ascertained  that  the  mark  is  properly 
registered,  the  administration  of  the  country  of  origin  will  for- 
ward to  the  International  Bureau  of  Industrial  Property  in 
Berne : 

A. — A  request  for  registration,  in  duplicate,  containing  a  typo- 
graphical representation  of  the  mark,  and  stating: 

1.  The  name  of  the  owner  of  the  mark. 

2.  His  address. 

3.  The  manufactures  or  goods  to  which  the  mark  applies. 

4.  The  date  of  registration  in  the  country  of  origin. 

5.  The  order  number  of  the  mark  in  the  country  of  origin. 

B. — A  block  of  the  mark  for  the  typographical  reproduction  of 
the  latter  in  the  publication  which  will  be  made  of  it  by  the 
International  Bureau.  This  block  must  reproduce  the  mark  ex- 
actly, so  as  to  show  up  all  details  in  the  most  conspicious  manner. 
It  must  not  be  less  than  15  millimetres  or  more  than  10  centime- 
tres, either  in  length  or  breadth.  The  exact  thickness  of  the  block 
must  be  24  millimetres,  corresponding  to  the  height  of  the 
printed  characters.  This  block  will  be  kept  at  the  International 
Bureau. 

C. — If  the  deponent  claims  the  color  as  a  distinctive  feature 
of  his  mark,  forty  copies  on  paper  of  a  colored  reproduction  of 
the  mark. 


INTERNATIONAL  UNION  66 1 

In  this  case  the  request  must  contain  a  brief  description  in 
French,  mentioning  the  color.  Should  neither  one  nor  the  other 
of  the  above-mentioned  conditions  be  observed,  the  International 
Bureau  will  proceed  with  the  registration  of  the  mark  and  noti- 
fication thereof  in  accordance  with  the  particulars  received. 

D. — A  postal  order  for  the  amount  of  the  international  charge. 

The  request  for  registration  will  be  drawn  up  in  accordance 
with  the  form  attached  to  the  present  regulation  or  any  other 
form  which  the  administrations  of  the  contracting  states  may  by 
common  agreement  subsequently  adopt.  The  International  Bu- 
reau will  forward  the  necessary  forms  to  the  administration- 
gratuitously. 

Article  3. — The  International  Bureau  will  proceed  without  de- 
lay to  enter  the  mark  in  a  register  kept  for  that  purpose.  This 
i  —  will  contain  the  following  particulars: 

1.  The  date  of  registration  at  the  International  Bureau. 

2.  The  date  of  notification  to  the  contracting  administra- 
tions. 

3.  The  order  number  of  the  mark. 

4.  The  name  of  the  owner  of  the  mark. 

5.  His  address. 

0.  The  manufactures   or  goods  to   which   the   mark  is 
applied. 

7.  The  country  of  origin  of  the  mark. 

8.  The  date  of  registration  in  the  country  of  origin. 

9.  The  order  number  of  the  mark  in  the  country  of  origin. 
10.     Memoranda  relating  to  refusal  of  protection,  transmis- 
sion (Art.  9  and  9  bis  of  the  arrangement)   or  erasure  of 
the  mark. 

Article  4. — As  soon  as  the  entry  is  made  in  the  register,  the 
International  Bureau  will  certify  on  the  two  copies  of  the  request 
that  the  registration  has  been  duly  effected,  and  will  affix  thereon 
its  signature  and  seal.  One  of  these  copies  will  be  filed  among 
the  records  of  the  Bureau  and  the  other  will  be  returned  to  the 
administration  of  the  country  of  origin. 

Furthermore,  the  International  Bureau  will  notify  to  the  ad- 
ministrations the  registration  so  effected  by  sending  to  each  of 
them  a  typographical  reproduction  of  the  mark  and  informing 
them  of: 

1.  The  date  of  registration  at  the  International  Bureau. 

2.  The  order  number  of  the  mark. 

3.  The  name  and  address  of  the  deponent. 

4.  The  manufactures  or  merchandise  to  which  the  mark 
is  applied. 

5.  The  country  of  origin  of  the  mark  as  well  as  the  date 
of  registration  and  order  number  in  said  country. 


662  INTERNATIONAL  UNION 

In  the  case  provided  by  Article  2  under  letter  C,  the  aforesaid 
notification  shall  mention,  in  addition,  the  deposit  in  colors,  and 
will  be  accompanied  by  a  copy  of  the  reproduction  of  the  mark 
in  colors. 

Article  5. — The  International  Bureau  will  then  see  to  the  pub- 
lication of  the  mark  in  a  supplement  of  its  journal  which  will 
consist  of  the  reproduction  of  the  mark,  accompanied  by  the 
details  mentioned  in  Article  4,  Paragraph  2 ;  and,  if  necessary, 
the  description  provided  under  letter  C  of  Articled. 

At  the  commencement  of  every  year  the  International  Bureau 
will  issue  a  table  giving  in  alphabetical  order  per  contracting 
state  the  names  of  the  owners  of  the  marks  published  during  the 
course  of  the  previous  year. 

Each  administration  will  receive  gratuitously  from  the  Inter- 
national Bureau  the  number  of  copies  it  may  choose  to  ask  for 
of  the  supplement  containing  the  publications  relating  to  Inter- 
national Registration. 

Article  6. — The  declaration  notified  to  the  International  Bureau 
in  the  terms  of  Article  5  of  the  arrangement  (non-admission  of 
the  mark  to  protection  in  a  given  country)  will  be  at  once  for- 
warded by  the  bureau  to  the  administration  of  the  country  of 
origin  and  to  the  owner  of  the  mark. 

Article  6  bis. — The  fee  provided  for  under  Article  5  bis  of  the 
arrangement  for  copies  or  extracts  from  the  register  is  fixed  at 
two  francs  per  copy  or  extract. 

Article  7. — Such  changes  as  may  have  taken  place  in  the  own- 
ership of  a  mark  and  which  have  been  made  the  object  of  the 
modification  mentioned  in  Article  9  and  9  bis  of  the  arrangement, 
will  be  entered  in  the  register  of  the  International  Bureau  except 
in  such  cases  where,  in  the  terms  of  the  third  paragraph  of  the 
latter  article,  transmission  can  not  be  registered.  The  Inter- 
national Bureau  will  in  its  turn  notify  to  the  contracting  adminis- 
trations the  registered  alterations,  and  will  publish  them  in  its 
journal,  keeping  in  view  the  provisions  of  the  first  paragraph  of 
Article  9  bis  when  the  new  owner  is  established  in  a  contracting 
state  other  than  the  country  of  origin  of  the  mark. 

Article  8. — Six  months  before  the  expiration  of  the  period  of 
protection  of  twenty  years  the  International  Bureau  will  send  an 
official  notice  to  that  effect  to  the  administration  of  the  country 
of  origin  and  the  owner  of  the  mark. 

The  formalities  to  be  observed  in  the  renewal  of  the  interna- 
tional registration  will  be  the  same  as  if  it  were  a  question  of  a 
new  registration  excepting  that  it  will  no  longer  be  necessary  to 
send  a  block. 

Article  9. — At  the  commencement  of  each  year  the  Interna- 
tional Bureau  will  make  out  a  statement  of  charges  of  all  kinds 
which  have  been  occasioned  during  the  previous  year  by  the 
international  registration  of  marks.  The  amount  of  these  charges 


INTERNATIONAL  UNION  663 

will  be  deducted  from  the  total  sums  received  from  the  adminis- 
trations by  way  of  fee  for  international  registration,  and  the 
excess  of  receipts  will  be  divided  in  equal  shares  between  all  the 
contracting  states. 

Article  10. — The  complete  list  prescribed  by  Article  11  of  the 
arrangement  will  contain  the  same  particulars  as  the  notification 
under  Article  4  of  the  present  regulations. 

Article  11. — The  present  regulation  will  continue  in  force  for 
the  same  length  of  time  as  the  arrangement  to  which  it  refers. 

The  contracting  administrations  may  at  any  time  introduce 
therein  by  mutual  agreement  such  modifications  as  may  seem 
necessary  to  them  in  accordance  with  the  provisions  of  Article 
10  of  the  said  arrangement. 

IV.     ARRANGEMENT  OF  APRIL  14,  1891 

Concerning  the  Suppression  of  False  Statements  of  Origin  of 

Merchandise 

Signature    April  I4th,  1891,  at  Madrid. 

Deposit  of  ratifications Tune  loth,  1892,  at  Madrid. 

Coming  into  force July  15th,  1893. 


List  of  Members  at  the  Restricted  Union 

SPAIN,  FRANCE,  with  ALGERIA  and  COLONIES,  GREAT  BRITAIN, 
SWITZERLAND,  and  TUNIS,  since  the  arrangement  came  into 
operation;  PORTUGAL,  with  the  AZORES  and  MADEIRA,  since 
October  31st,  1893 ;  BRAZIL,  since  October  3d,  1893. 

Article  1.— All  products  bearing  a  false  statement  of  origin 
in  \vhich  one  of  the  contracting  states  or  some  locality  situated 
in  one  or  other  of  them  is  mentioned  directly  or  indirectly  as  the 
country  or  place  of  origin,  shall  be  seized  on  importation  into 
anv  one  of  the  said  states. 

The  seizure  may  also  be  effected  in  the  state  where  the  false 
declaration  of  origin  may  have  been  affixed,  or  in  that  state  into 
which  the  product  bearing  such  false  declaration  shall  have  been 
introduced. 

If  the  laws  of  a  state  do  not  allow  of  the  seizure  on  importa- 
tion, such  seizure  to  be  substituted  by  a  prohibition  to  import. 

If  the  laws  of  a  state  do  not  allow  of  a  seizure  inland,  such 
seizure  to  be  substituted  by  acts  and  measures  which  the  laws  of 
the  said  state  provide  in  such  cases  for  the  benefit  of  natives. 

Article  2. — The  seizure  will  be  made  either  at  the  request  of 
the  proper  public  officer  or  an  interested  party,  individual  or 
company,  in  accordance  with  the  internal  laws  of  each  state. 


664  CONVENTION  OF  AMERICAN  STATES 

The  authorities  shall  not  be  called  upon  to  effect  the  seizure 
during  transit. 

Article  3. — The  present  provisions  do  not  prevent  the  seller 
putting  his  name  or  address  on  the  products  coming  from  a 
country  other  than  that  of  sale,  but  in  that  case,  the  address  or 
name  must  be  accompanied  by  a  precise  statement  in  conspicuous 
characters  of  the  country  or  place  of  manufacture  or  production. 

Article  4. — The  tribunals  of  each  country  will  have  to  decide 
what  are  the  appellations  which,  from  their  generic  character,  are 
outside  the  provisions  of  this  arrangement,  the  district  appella- 
tions of  the  origin  of  wine  products  not  being,  however,  included 
in  the  reservation  laid  down  by  this  article. 

Article  5. — The  states  of  the  Union  for  the  protection  of  in- 
dustrial property  which  have  not  taken  part  in  the  present  ar- 
rangement will  be  admitted  at  their  request  to  join  the  same  in 
the  form  prescribed  by  Article  16  of  the  Convention  of  March 
20th,  1883,  for  the  protection  of  industrial  property. 

Article  6. — The  present  arrangement  will  be  ratified  and  the 
ratifications  of  the  same  exchanged  at  Madrid  within  a  period 
of  six  months  at  the  latest. 

It  will  come  into  operation  in  one  month  from  the  date  of  the 
exchange  of  ratifications  and  will  have  the  same  force  and  dura- 
tion as  the  Convention  of  March  20th,  1883. 

In  witness  whereof  the  plenipotentiaries  of  the  states  enume- 
rated above  have  signed  the  present  arrangement. 


FOURTH  INTERNATIONAL  CONGRESS  OF 
AMERICAN  STATES 

Conventions  Relating  to  Patents,  Trade  Marks, 
Designs,  Etc. 

DEPARTMENT  OF  THE  INTERIOR, 

UNITED  STATES  PATENT  OFFICE, 

Washington,  D.  C.,  February  23,  1911. 

The  ^  following  conventions  relating  to  patents,  designs,  and 
industrial  models,  trade  marks,  and  literary  and  artistic  copy- 
rights, which  were  prepared  at  the  request  of  the  Secretary  of 
State  by  the  Commissioner  of  Patents,  who  was  designated  by 
the  President  of  the  United  States  as  the  Expert  Attache  to  the 
delegation  of  the  United  States  of  America  to  the  Fourth  Inter- 
national Congress  of  American  States;  were  adopted  by  said  Con- 
gress, which  met  at  Buenos  Ayres  June  9  to  August  30,  1910, 
and  have  been  approved  by  the  United  States  Senate. 

EDWARD  B.  MOORE, 
Commissioner  of  Patents. 


CONVENTION  OF  AMERICAN  STATES  665 

CONVENTION 
INVENTIONS,  PATENTS,  DESIGNS  AND  INDUSTRIAL  MODELS. 

Their  Excellencies  the  Presidents  of  the  United  States  of 
America,  the  Argentine  Republic,  Brazil,  Chili,  Colombia,  Costa 
Rica,  Cuba,  Dominican  Republic,  Ecuador,  Guatemala,  Haiti, 
Honduras,  Mexico,  Nicaragua,  Panama,  Paraguay,  Peru,  Salva- 
dor, Uruguay  and  Venezuela : 

Being  desirous  that  their  respective  countries  may  be  repre- 
sented at  the  Fourth  International  American  Conference,  have 
sent  thereto  the  following  delegates,  duly  authorized  to  approve 
the  recommendations,  resolutions,  conventions,  and  treaties 
which  they  might  deem  advantageous  to  the  interests  of  America. 
United  States  of  America:  Henry  White,  Enoch  H.  Crowder, 

Lewis  Nixon,  John  Bassett  Moore,  Bernard  Moses,  Lamar 

C.  Quintero,  Paul  Samuel  Reinsch,  David  Kinley. 
Argentine  Republic:    Antonio  Bermejo,  Eduardo  L.  Bidau,  Man- 
uel A.  Montes  de  Oca,  Epifanio  Portela,  Carlos  Rodriguez 

Larreta,  Carlos  Salas,  Jose  A.  Terry,  Estanislao  S.  Zeballos. 
United  States  of  Brazil:    Joaquim  Murtinho,  Domicio  da  Gama, 

Jose  L.  Almeida  Nogueira,  Olavo  Bilac,  Gastao  da  Cunha, 

Herculano  de  Freitas. 
Republic  of  Chili:    Miguel    Cruchaga   Tocornal,    Emilio    Bello 

Codecido,  Anibal  Cruz  Diaz,  Beltran  Mathieu. 
Republic  of  Colombia:    Roberto  Ancizar. 
Republic  of  Costa  Rica:    Alfredo  Volio. 
Republic  of  Cuba:    Carlos  Garcia  Velez,  Rafael  Montoro  y  Valdes, 

Gonzalo  de  Quesada  y  Arostegui,  Antonio  Gonzalo  Perez, 

Jose  M.  Carbonell. 

Dominican  Republic:    Americo  Lugo. 
Republic  of  Ecuador:    Alejandro  Cardenas. 
Republic  of  Guatemala:    Luis  Toledo  Herrarte,  Manuel  Arroyo, 

Mario  Estrada. 

Republic  of  Haiti:    Constantin  Fouchard. 
Republic  of  Honduras:    Luis  Lazo  Arriaga. 
Mexican  United  States:    Victoriano  Salado  Alvarez,  Luis  Perez 

Verdia,  Antonio  Ramos  Pedrueza,  Roberto  A.  Esteva  Ruiz. 
Republic  of  Nicaragua:    Manuel  Perez  Alonso. 
Republic  of  Panama:    Belisario  Porras. 

Republic  of  Paraguay:     Teodosio  Gonzalez,  Jose  P.  Montero. 
Republic  of  Peru:    Eugenio  Larrabure  y  Unanue,  Carlos  Alvarez 

Calderon,  Jose  Antonio  de  Lavalle  y  Pardo. 
Republic    of  Salvador:     Federico    Mejia,    Francisco    Martinez 

Suarez. 
Republic  of  Uruguay:    Gonzalo  Ramirez,  Carlos  M.  de  Pena, 

Antonio  M.  Rodriguez.  Juan  Jos6  Amezaga. 
United  States  of  Venezuela:    Manuel  Diaz  Rodriguez,  Cesar 

Zumeta. 
Who,  after  having  presented  their  credentials,  and  the  same 


CONVENTION  OF  AMERICAN  STATES 

having  been  found  in  due  and  proper  form,  have  agreed  upon 
the  following  convention  on  inventions,  patents,  designs,  and  in- 
dustrial models. 

ARTICLE  I.  The  subscribing  nations  enter  into  this  convention 
for  the  protection  of  patents  of  invention,  designs,  and  industrial 
models. 

ART.  II.  Any  persons  who  shall  obtain  a  patent  of  invention 
in  any  of  the  signatory  States  shall  enjoy  in  each  of  the  other 
States  all  the  advantages  which  the  laws  relative  to  patents  of 
invention,  designs,  and  industrial  models  concede.  Consequently, 
they  shall  have  the  right  to  the  same  protection  and  identical 
legal  remedies  against  any  attack  upon  their  rights,  provided  they 
comnlv  with  the  laws  of  each  State. 

ART.  III.  Any  person  who  shall  have  regularly  deposited  an 
armlication  for  a  patent  of  invention  or  design  or  industrial  model 
in  one  of  the  contracting  States  shall  enjoy,  for  the  purposes  of 
making  the  deposit  in  the  other  States  and  under  the  reserve  of 
the  rights  of  third  parties,  a  right  of  priority  during  a  period  of 
twelve  months  for  patents  of  invention,  and  of  four  months  for 
designs  or  industrial  models. 

In  consequence  the  deposits  subsequently  made  in  any  other  of 
the  signatory  States  before  the  expiration  of  these  periods  cannot 
be  invalidated  by  acts  performed  in  the  interval,  especially  by 
other  deposits,  by  the  publication  of  the  invention  or  its  work- 
ing, or  by  the  sale  of  copies  of  the  design  or  of  the  model. 

ART.  IV.  When,  within  the  terms  fixed,  a  person  shall  have 
filed  applications  in  several  States  for  the  patent  of  the  same 
invention,  the  rights  resulting  from  patents  thus  applied  for  shall 
be  independent  of  each  other. 

They  shall  also  be  independent  of  the  rights  arising  under 
patents  obtained  for  the  same  invention  in  countries  not  parties 
to  this  convention. 

ART.  V.  Questions  which  may  arise  regarding  the  priority  of 
patents  of  invention  shall  be  decided  with  regard  to  the  date  of 
the  application  for  the  respective  patents  in  the  countries  in  which 
they  are  granted. 

ART.  VI.  The  following  shall  be  considered  as  inventions :  A 
new  manner  of  manufacturing  industrial  products,  a  new  ma- 
chine or  mechanical  or  manual  apparatus  which  serves  for  the 
manufacture  of  said  products,  the  discovery  of  a  new  industrial 
product,  the  application  of  known  methods  for  the  purpose  of 
securing  better  results,  and  every  new.  original,  and  ornamental 
design  or  model  for  an  article  of  manufacture. 

The  foregoing  shall  be  understood  without  prejudice  to  the 
laws  of  each  State. 

ART.  VII.  Any  of  the  signatory  States  may  refuse  to  recog- 
nize patents  for  any  of  the  following  causes : 

(a)     Because  the   inventions   or   discoveries  may  have  been 


CONVENTION  OF  AMERICAN  STATES  667 

published  in  any  country  prior  to  the  date  of  the  invention  by  the 
applicant. 

(6)  Because  the  inventions  have  been  registered,  published, 
or  described  in  any  country  more  than  one  year  prior  to  the  date 
of  the  application  in  the  country  in  which  the  patent  is  sought. 

(c)  Because  the  inventions  have  been  in  public  use,  or  have 
been  on  sale  in  the  country  in  which  the  patent  has  been  applied 
for,  one  year  prior  to  the  date  of  said  application. 

(d}  Because  the  inventions  or  discoveries  are  in  some  manner 
contrary  to  morals  or  laws. 

ART.  VIII.  The  ownership  of  a  patent  of  invention  comprises 
the  right  to  enjoy  the  benefits  thereof,  and  the  right  to  assign 
or  transfer  it  in  accordance  with  the  laws  of  the  country. 

ART.  IX.  Persons  who  incur  civil  or  criminal  liabilities,  be- 
cause of  injuries  or  damage  to  the  rights  of  inventors,  shall  be 
prosecuted  and  punished  in  accordance  with  the  laws  of  the 
countries  wherein  the  offense  has  been  committed  or  the  damage 
occasioned. 

ART.  X.  Copies  of  patents  certified  in  the  country  of  origin, 
according  to  the  national  law  thereof,  shall  be  given  full  faith 
and  credit  as  evidence  of  the  right  of  priority,  except  as  stated  in 
Article  VII. 

ART.  XI.  The  treaties  relating  to  patents  of  invention,  de- 
signs, or  industrial  models,  previously  entered  into  between  the 
countries  subscribing  to  the  present  convention,  shall  be  super- 
seded by  the  same  from  the  time  of  its  ratification  in  so  far  as 
the  relations  between  the  signatory  States  are  concerned. 

ART.  XII.  The  adhesion  of  the  American  Nations  to  the 
present  convention  shall  be  communicated  to  the  Government  of 
the  Argentine  Republic  in  order  that  it  may  communicate  them 
to  the  other  States.  These  communications  shall  have  the  effect 
of  an  exchange  of  ratifications. 

ART.  XIII.  A  signatory  nation  that  sees  fit  to  retire  from  the 
present  convention,  shall  notify  the  Government  of  the  Argentine 
Republic,  and  one  year  after  the  receipt  of  the  communication 
the  force  of  this  convention  shall  cease,  in  so  far  as  the  nation 
which  shall  have  withdrawn  its  adherence  is  concerned. 

In  witness  whereof,  the  plenipotentiaries  have  signed  the 
present  treaty  and  affixed  thereto  the  seal  of  the  Fourth  Inter- 
national American  Conference. 

Made  and  signed  in  the  city  of  Buenos  Ayres  on  the  20th  day 
of  August  in  the  year  1910,  in  Spanish,  English,  Portuguese, 
and  French,  and  deposited  in  the  ministry  of  foreign  affairs  of 
the  Argentine  Republic,  in  order  that  certified  copies  be  made  for 
transmission  to  each  of  the  signatory  nations  through  the  ap- 
propriate diplomatic  channels. 


668  CONVENTION  OF  AMERICAN  STATES 

For  the  United  States  of  America: 

Henry  White.  Bernard  Moses. 

Enoch  H.  Crowder.  Lamar  C.  Quintero. 

Lewis  Nixon.  Paul  S.  Reinsch. 

John  Bassett  Moore.  David  Kinley. 

For  the  Argentine  Republic: 

Antonio  Bermejo.  Carlos  Salas. 

Eduardo  L.  Bidau.  Jose  A.  Terry. 

Manuel  A.  Montes  de  Oca.  Estanislao  S.  Zeballos. 
Epifanio  Portela. 

For  the  United  States  of  Brazil: 

Joaquim  Murtinho.  Olavo  Bilac. 

Domicio  da  Gama.  Gastao  da  Cunha. 

Jose  L.  Almeida  Nogueira.          Herculano  de  Freitas. 

For  the  Republic  of  Chili: 

Miguel  Cruchaga  Tocornal.         Anibal  Cruz  Diaz. 
Emilio  Bello  Codecido.  Beltran  Mathieu. 

For  the  Republic  of  Colombia: 
Roberto  Ancizar. 

For  the  Republic  of  Costa  Rica: 
Alfredo  Volio. 

For  the  Republic  of  Cuba: 

Carlos  Garcia  Velez.  Jose  M.  Carbonell. 

Rafael  Montoro  y  Valdes.  Gonzalo  de  Quesada  y 

Antonio  Gonzalo  Perez.  Arostegui. 

For  the  Dominican  Republic: 
Americo  Lugo. 

For  the  Republic  of  Ecuador: 
Alejandro  Cardenas. 

For  the  Republic  of  Guatemala: 

Luis  Toledo  Herrarte.  Mario  Estrada. 

Manuel  Arroyo. 


CONVENTION  OF  AMERICAN  STATES  669 

For  the  Republic  of  Haiti: 
Constantin  Fouchard. 

For  the  Republic  of  Honduras: 
Luis  Lazo  Arriaga. 

For  the  Mexican  United  States: 

Victoriano  Salado  Alvarez.          Antonio  Ramos  Pedrueza. 
Luis  Perez  Verdia.  Roberto  A.  Esteva  Ruiz. 

For  the  Republic  of  Nicaragua: 
Manuel  Perez  Alonso. 

For  the  Republic  of  Panama: 
Belisario  Porras. 

For  the  Republic  of  Paraguay: 
Teodosio  Gonzalez.  Jose  P.  Montero. 

For  the  Republic  of  Peru: 

Eugenio  Larrabure  y  Unanue.     Jose  Antonio  de  Lavalle  y 
Carlos  Alvarez  Calderon.  Pardo. 

For  the  Republic  of  Salvador: 
Federico  Mejia.  Francisco  Martinez  Suarez. 

For  the  Republic  of  Uruguay: 

Gonzalo  Ramirez.  Antonio  M.  Rodriguez. 

Carlos  M.  de  Pena.  Juan  Jose  Amezaga. 

For  the  United  States  of  Venezuela: 
Manuel  Diaz  Rodriguez.  Cesar  Zumeta. 


CONVENTION 
PROTECTION  OF  TRADE  MARKS. 

Their  Excellencies  the  Presidents  of  the  United  States  of 
America,  the  Argentine  Republic,  Brazil,  Chili,  Colombia,  Costa 
Rica,  Cuba,  Dominican  Republic,  Ecuador,  Guatemala,  Haiti, 


670  CONVENTION  OF  AMERICAN  STATES 

Honduras,  Mexico,  Nicaragua,  Panama,  Paraguay,  Peru,  Salva- 
dor, Uruguay  and  Venezuela; 

Being  desirous  that  their  respective  countries  may  be  repre- 
sented at  the  Fourth  International  American  Conference,  have 
sent  thereto  the  following  delegates,  duly  authorized  to  approve 
the  recommendations,  resolutions,  conventions,  and  treaties  which 
they  might  deem  advantageous  to  the  interest  of  America : 
United  States  of  America:  Henry  White,  Enoch  H.  Crowder, 

Lewis  Nixon,  John  Bassett  Moore,  Bernard  Moses,  Lamar 

C.  Quintero,  Paul  Samuel  Reinsch,  David  Kinley. 
Argentine  Republic:     Antonio  Bermejo,  Eduardo  L.  Bidau,  Man- 
uel A.  Montes  de  Oca,  Epifanio  Portela,  Carlos  Rodriguez 

Larreta,  Carlos  Salas,  Jose  A.  Terry,  Estanislao  S.  Zeballos. 
United  States  of  Brazil:     Joaquim  Murtinho,  Domicio  da  Garna, 

Jose  L.  Almeida  Nogueira,  Olavo  Bilac,  Gastao  da  Cunha, 

Herculano  de  Freitas. 
Republic    of   Chili:     Miguel    Cruchaga   Tocornal,   Emilio   Bello 

Codecido,  Anibal  Cruz  Diaz,  Beltran  Mathieu. 
Republic  of  Colombia:    Roberto  Ancizar. 
Republic  of  Costa  Rica:     Alfredo  Volio. 
Republic  of  Cuba:  Carlos  Garcia  Velez,  Rafael  Montoro  y  Valdes, 

Gonzalo  de  Quesada  y  Arostegui,  Antonio  Gonzalo  Perez, 

Jose  M.  Carbonell. 

Dominican  Republic:     Americo  Lugo. 
Republic  of  Ecuador:     Elejandro  Cardenas. 
Republic  of  Guatemala:     Luis  Toledo  Herrarte,  Manuel  Arroyo, 

Mario  Estrada. 

Republic  of  Haiti:     Constantin  Fouchard. 
Republic  of  Honduras:     Luis  Lazo  Arriaga. 
Mexican  United  States:     Victoriano  Salado  Alvarez,  Luis  Perez 

Verdia,  Antonio  Ramos  Pedrueza,  Roberto  A.  Esteva  Ruiz. 
Republic  of  Nicaragua:     Manuel  Perez  Alonso. 
Republic  of  Panama:     Belisario  Porras. 

Republic  of  Paraguay:     Teodosio  Gonzalez,  Jose  P.  Montero. 
Republic  of  Peru:     Eugenic  Larrabure  y  Unanue,  Carlos  Alvarez 

Calderon,  Jose  Antonio  de  Lavalle  y  Pardo. 
Republic    of    Salvador:     Federico    Mejia,    Francisco    Martinez 

Suarez. 
Republic  of  Uruguay:    Gonzalo  Ramirez,  Carlos  M.  de  Pena, 

Antonio  M.  Rodriguez,  Juan  Jose  Amezaga. 
United  States   of   Venezuela:    Manuel   Diaz   Rodriguez,  Cesar* 

Zumeta. 

Who,  after  having  presented  their  credentials  and  the  same 
having  been  found  in  due  and  proper  form,  have  agreed  upon, 
the  following  Convention  for  the  Protection  of  Trade  Marks. 

ARTICLE  I.  The  signatory  nations  enter  into  this  convention 
for  the  protection  of  trade  marks  and  commercial  names. 

ART.  II.     Any  mark  duly  registered  in  one  of  the  signatory 


CONVENTION  OF  AMERICAN  STATES  671 

States  shall  be  considered  as  registered  also  in  the  other  States 
of  the  union,  without  prejudice  to  the  rights  of  third  persons  and 
to  the  provisions  of  the  laws  of  each  State  governing  the  same. 

In  order  to  enjoy  the  benefit  of  the  foregoing,  the  manufacturer 
or  merchant  interested  in  the  registry  of  the  mark  must  pay,  in 
addition  to  the  fees  or  charges  fixed  by  the  laws  of  the  State  in 
which  application  for  registration  is  first  made,  the  sum  of  fifty 
dollars  gold,  which  sum  shall  cover  all  the  expenses  of  both 
bureaus  for  the  international  registration  in  all  the  signatory 
States. 

ART.  III.  The  deposit  of  a  trade  mark  in  one  of  the  signatory 
States  produces  in  favor  of  the  depositor  a  right  of  priority  for 
the  period  of  six  months,  so  as  to  enable  the  depositor  to  make  the 
deposit  in  the  other  States. 

Therefore  the  deposit  made  subsequently  and  prior  to  the  ex- 
piration of  this  period  cannot  be  annulled  by  acts  performed  in 
the  interval,  especially  by  another  deposit,  by  publication,  or  by 
the  use  of  the  mark. 

ART.  IV.  The  following  shall  be  considered  as  trade  mark : 
Any  sign,  emblem,  or  special  name  that  merchants  or  manufac- 
turers may  adopt  or  apply  to  their  goods  or  products  in  order  to 
distinguish  them  from  those  of  other  manufacturers  or  merchants 
who  manufacture  or  deal  in  articles  of  the  same  kind. 

ART.  V.  The  following  cannot  be  adopted  or  used  as  trade 
mark  :  National,  provincial,  or  municipal  flags  or  coats-of-arms  ; 
immoral  or  scandalous  figures ;  distinctive  marks  which  may  have 
been  obtained  by  others  or  which  may  give  rise  to  confusion  with 
other  marks ;  the  general  classification  of  articles ;  pictures  or 
names  of  persons  without  their  permission ;  and  any  design  which 
may  have  been  adopted  as  an  emblem  by  any  fraternal  or  humani- 
tarian association. 

The  foregoing  provision  shall  be  construed  without  prejudice 
to  the  particular  provisions  of  the  laws  of  each  State. 

ART.  VI.  All  questions  which  may  arise  regarding  the  prior- 
ity of  the  deposit  or  the  adoption  of  a  trade  mark  shall  be  decided 
with  due  regard  to  the  date  of  the  deposit  in  the  State  in  which 
the  first  application  was  made  therefor. 

ART.  VII.  The  ownership  of  a  trade  mark  includes  the  right 
to  enjoy  the  benefits  thereof  and  the  right  of  assignment  or 
transfer  in  whole  or  in  part  of  its  ownership  or  its  use  in  accord- 
ance with  the  provisions  of  the  laws  of  the  respective  States. 

ART.  VIII.  The  falsification,  imitation,  or  unauthorized  use 
of  a  trade  mark,  as  also  the  false  representation  as  to  the  origin 
of  a  product,  shall  be  prosecuted  by  the  interested  party  in 
accordance  with  the  laws  of  the  State  wherein  the  offense  is 
committed. 

For  the  effects  of  this  article,  interested  parties  shall  be  under- 
stood to  be  any  producer,  manufacturer,  or  merchant  engaged 


672  CONVENTION  OF  AMERICAN  STATES 

in  the  production,  manufacture,  or  traffic  of  said  product,  or  in 
the  case  of  false  representation  of  origin,  one  doing  business  in 
the  locality  falsely  indicated  as  that  of  origin,  or  in  the  territory 
where  said  locality  is  situated. 

ART.  IX.  Any  person  in  any  of  the  signatory  States  shall 
have  the  right  to  petition  and  obtain  in  any  of  the  States,  through 
its  competent  judicial  authority,  the  annulment  of  the  registra- 
tion of  a  trade  mark,  when  he  shall  have  made  application  for 
the  registration  of  that  mark,  or  of  any  other  mark,  calculated  to 
be  confused,  in  such  State,  with  the  mark  in  whose  annulment  he 
is  interested,  upon  proving : 

(a)  That  the  mark  the  registration  whereof  he  solicits  has 
been  employed  or  used  within  the  country  prior  to  the  employ- 
ment or  use  of  the  mark  registered  by  the  person  registering  it 
or  by  the  persons  from  whom  he  has  derived  title; 

(b)  That  the  registrant  had  knowledge  of  the  ownership, 
employment,  or- use  in  any  of  the  signatory  States  of  the  mark 
of  the  applicant  the  annulment  whereof  is  sought  prior  to  the  use 
of  the  registered  mark  by  the  registrant  or  by  those  from  whom 
he  has  derived  title; 

(c)  That  the  registrant  had  no  right  to  the  ownership,  em- 
ployment, or  use  of  the  registered  mark  on  the  date  of  its  de- 
posit ; 

(d)  That  the  registered  mark  had  not  been  used  or  employed 
by  the  registrant  or  by  his  assigns  within  the  term  fixed  by  the 
laws  of  the  State  in  which  the  registration  shall  have  been  made. 

ART.  X.  Commercial  names  shall  be  protected  in  all  the 
States  of  the  union,  without  deposit  or  registration,  whether  the 
same  form  part  of  a  trade  mark  or  not. 

ART.  XI.  For  the  purposes  indicated  in  the  present  conven- 
tion a  union  of  American  Nations  is  hereby  constituted,  which 
shall  act  through  two  international  bureaus  established  one  in  the 
city  of  Habana,  Cuba,  and  the  other  in  the  city  of  Rio  de  Janeiro, 
Brazil,  acting  in  complete  accord  with  each  other. 

ART.  XII.  The  international  bureaus  shall  have  the  following 
duties : 

1.  To  keep  a  register  of  the  certificates  of  ownership  of  trade 
mark  issued  by  any  of  the  signatory  States. 

2.  To  collect  such  reports  and  data  as  relate  to  the  protection 
of  intellectual  and  industrial  property  and  to  publish  and  circulate 
them  among  the  nations  of  the  union,  as  well  as  to  furnish  them 
whatever  special  information  they  may  need  upon  this  subject. 

3.  To  encourage   the   study  and   publicity  of  the   questions 
relating  to  the  protection  of  intellectual  and  industrial  property; 
to  publish   for  this  purpose  one  or  more  official  reviews,  con- 
taining the  full  texts  or  digest  of  all  documents  forwarded  to  the 
bureaus  by  the  authorities  of  the  signatory  States. 

The  Governments  of  said  States  shall  send  to  the  International 


CONVENTION  OF  AMERICAN  STATES  673 

American  Bureaus  their  official  publications  which  contain  the 
announcements  of  the  registrations  of  trade  marks,  and  com- 
mercial names,  and  the  grants  of  patents  and  privileges  as  well 
as  the  judgments  rendered  by  the  respective  courts  concerning 
the  invalidity  of  trade  marks  and  patents. 

4.  To  communicate  to  the   Governments   of  the   union   any 
difficulties  or  obstacles  that  may  oppose  or  delay  the  effective 
application  of  this  convention. 

5.  To  aid  the  Governments  of  the  signatory  States  in  the 
preoarations  of  international  conferences  for  the  study  of  legisla- 
tion concerning  industrial  property,  and  to  secure  such  alterations 
as  it  may  be  proper  to  propose  in  the  regulations  of  the  union,  or 
in  treaties  in  force  to  protect  industrial  property.     In  case  such 
conferences  take  place,  the  directors  of  the  bureaus  shall  have 
the  right  to  attend  the  meetings  and  there  to  express  their  opin- 
ions, but  not  to  vote. 

6.  To  present  to  the  Governments  of  Cuba  and  of  the  United 
States  of  Brazil,  respectively,  yearly  reports  of  their  labors  which 
shall  be  communicated  at  the  same  time  to  all  the  Governments 
of  the  other  States  of  the  union. 

7.  To  initiate  and  establish  relations  with  similar  bureaus  and 
with  the  scientific  and  industrial  associations  and  institutions  for 
the  exchange  of  publications,  information,  and  data  conducive  to 
the  progress  of  the  protection  of  industrial  property. 

8.  To  investigate  cases  where  trade  marks,  designs,  and  in- 
dustrial models  have  failed  to  obtain  the  recognition  of  registra- 
tion provided  for  by  this  convention,  on  the  part  of  the  authorities 
of  any  one  of  the  States  forming  the  union,  and  to  communicate 
the  facts  and  reasons  to  the  Government  of  the  country  of  origin 
and  to  interested  parties. 

9.  To  co-operate  as  agents  for  each  one  of  the  Governments 
of  the  signatory  States  before  the  respective  authorities  for  the 
better  performance  of  any  act  tending  to  promote  or  accomplish 
the  ends  of  this  convention. 

ART.  XIII.  The  bureau  established  in  the  city  of  Habana, 
Cuba,  shall  have  charge  of  the  registration  of  trade  marks  coming 
from  the  United  States  of  America,  Mexico,  Cuba,  Haiti,  the 
Dominican  Republic,  El  Salvador,  Honduras,  Nicaragua,  Costa 
Rica,  Guatemala,  and  Panama. 

The  bureau  established  in  the  city  of  Rio  de  Janeiro  shall  have 
charge  of  the  registration  of  trade  marks  coming  from  Brazil, 
Uruguay,  the  Argentine  Republic,  Paraguay,  Bolivia,  Chili,  Peru, 
Ecuador,  Venezuela,  and  Colombia. 

ART.  XIV.  The  two  international  bureaus  shall  be  considered 
as  one,  and  for  the  purpose  of  the  unification  of  the  registrations 
it  is  provided : 

43 


674  CONVENTION  OF  AMERICAN  STATES 

(a)  Both  shall  have  the  same  books  and  the  same  accounts, 
kept  under  an  identical  system. 

(b)  Copies  shall  be  reciprocally  transmitted  weekly  from  one 
to  the  other  of  all  applications,   registrations,  communications, 
and  other  documents  affecting  the  recognition  of  the  rights  of 
owners  of  trade  marks. 

ART.  XV.  The  international  bureaus  shall  be  governed  by 
identical  regulations,  formed  with  the  concurrence  of  the  Gov- 
ernments of  the  Republic  of  Cuba  and  of  the  United  States  of 
Brazil  and  approved  by  all  the  other  signatory  States. 

Their  budgets,  after  being  sanctioned  by  the  said  Governments, 
shall  be  defrayed  by  all  the  signatory  States  in  the  same  pro- 
portion as  that  established  for  the  International  Bureau  of  the 
American  Republics  at  Washington,  and  in  this  particular  they 
shall  be  placed  under  the  control  of  those  Governments  within 
whose  territories  they  are  established. 

The  international  bureaus  may  establish  such  rules  of  practice 
and  procedure,  not  inconsistent  with  the  terms  of  this  convention, 
as  they  may  deem  necessary  and  proper  to  give  effect  to  its 
provisions. 

ART.  XVI.  The  Governments  of  the  Republic  of  Cuba  and  of 
the  United  States  of  Brazil  shall  proceed  with  the  organization 
of  the  Bureaus  of  the  International  Union  as  herein  provided, 
upon  the  ratification  of  this  convention  by  at  least  two-thirds  of 
the  nations  belonging  to  each  group. 

The  simultaneous  establishment  of  both  bureaus  shall  not  be 
necessary :  one  only  may  be  established  if  there  be  the  number 
of  adherent  Governments  provided  for  above. 

ART.  XVII.  The  treaties  on  trade  marks  previously  con- 
cluded by  and  between  the  signatory  States,  shall  be  substituted 
by  the  present  convention  from  the  date  of  its  ratification,  as  far 
as  the  relations  between  the  signatory  States  are  concerned. 

ART.  XVIII.  The  ratifications  or  adhesion  of  the  American 
States  to  the  present  convention  shall  be  communicated  to  the 
Government  of  the  Argentine  Republic,  which  shall  lay  them 
before  the  other  States  of  the  union.  These  communications 
shall  take  the  place  of  an  exchange  of  ratifications. 

ART.  XIX.  Any  signatory  State  that  may  see  fit  to  withdraw 
from  the  present  convention  shall  so  notify  the  Government  of 
the  Argentine  Republic,  which  shall  communicate  this  fact  to  the 
other  States  of  the  union,  and  one  year  after  the  receipt  of  such 
communication  this  convention  shall  cease  with  regard  to  the 
State  that  shall  have  withdrawn. 

In  witness  whereof  the  plenipotentiaries  and  delegates  sign 
this  convention  and  affix  to  it  the- seal  of  the  Fourth  International 
American  Conference. 

Made  and  signed  in  the  city  of  Buenos  Ayres  on  the  20th  day 
of  August  in  the  year  1910,  in  Spanish,  English,  Portuguese, 


CONVENTION  OF  AMERICAN  STATES  675 

and  French,  and  filed  in  the  Ministry  of  Foreign  Affairs  of  the 
Argentine  Republic  in  order  that  certified  copies  may  be  made, 
to  be  forwarded  through  appropriate  diplomatic  channels  to  each 
one  of  the  signatory  nations. 

For  the  United  States  of  America: 

Henry  White.  Bernard  Moses. 

Enoch  H.  Crowder.  Lamar  C.  Quintero. 

Lewis  Nixon.  Paul  S.  Reinsch. 

John  Bassett  Moore.  David  Kinley. 

For  the  Argentine  Republic: 

Antonio  Bermejo.  Carlos  Salas. 

Eduardo  L.  Bidau.  Jose  A.  Terry. 

Manuel  A.  Montes  de  Oca.  Estanislao  S.  Zeballos. 
Epifanio  Portela. 

For  the  United  States  of  Brazil: 

Joaquim  Murtinho.  Olavo  Bilac. 

Domicio  da  Gama.  Gastao  da  Cunha. 

Jose  L.  Almeida  Norgueira.         Herculano  de  Freitas. 

For  the  Republic  of  Chili: 

Miguel  Cruchaga  Tocornal.         Anibal  Cruz  Diaz. 
Emilio  Bello  Codecido.  Beltran  Mathieu. 

For  the  Republic  of  Colombia: 
Roberto  Ancizar. 

For  the  Republic  of  Costa  Rica: 

Alfredo  Volio. 

» 

For  the  Republic  of  Cuba: 

Carlos  Garcia  Velez.  Antonio  Gonzalo  Perez. 

Rafael  Montoro  y  Valdes.  Jose  M.  Carbonell. 

Gonzalo  de  Quesada  y  Arostegui. 

For  the  Dominican  Republic: 
Americo  Lugo. 

For  the  Republic  of  Ecuador: 
Alejandro  Cardenas. 


676  INTERNATIONAL  UNION 

For  the  Republic  of  Guatemala: 
Luis  Toledo  Herrarte.  Mario  Estrada. 

Manuel  Arroyo. 

For  the  Republic  of  Haiti: 
Constantin  Fouchard. 

For  the  Republic  of  Honduras: 
Luis  Lazo  Arriaga. 

For  the  Mexican  United  States: 

Victoriano  Salado  Alvarez.         Antonio  Ramos  Pedrueza. 
Luis  Perez  Vedia.  Roberto  A.  Esteva  Ruiz. 

For  the  Republic  of  Nicaragua: 
Manuel  Perez  Alonso. 

For  the  Republic  of  Panama: 
Belisario  Porras. 

For  the  Republic  of  Paraguay: 
Teodosio  Gonzalez.  Jose  P.  Montero. 

For  the  Republic  of  Peru. 

Eugenio  Larrabure  y  Unanue.     Jose  Antonio  de  Lavalle  y 
Carlos  Alvarez  Calderon.  Pardo, 

For  the  Republic  of  Salvador: 
Federico  Mejia.  Francisco  Martinez  Suarez. 

For  the  Republic  of  Uruguay: 

Gonzalo  Ramirez.  Antonio  M.  Rodriguez. 

Carlos  M.  de  Pena.  Juan  Jose  Amezaga. 

For  the  United  States  of  Venezuela: 
Manuel  Diaz  Rodriguez.  Cesar  Zumeta. 


INTERNATIONAL  UNION 

Revision  of  the  Paris  Convention  of  1883  and  the  Additional 
Act  of  Brussels  of  1900 

ART.  1.  The  contracting  countries  constitute  themselves  a 
Union  for  the  Protection  of  Industrial  Property. 

ART.  2.  The  subjects  or  citizens  of  each  of  the  contracting 
countries  shall,  in  all  other  countries  of  the  Union,  in  matters 


INTERNATIONAL  UNION  677 

concerning  patents  of  invention,  utility  models,  industrial  designs 
or  models,  trade  or  commercial  marks,  trade  names,  indications 
of  origin  and  suppression  of  unfair  competition,  enjoy  the  ad- 
vantages which  their  respective  laws  now  grant  or  shall  hereafter 
grant  to  natives.  Consequently,  they  shall  have  the  same  pro- 
tection as  the  latter  and  the  same  legal  remedy  against  any  in- 
fringements of  their  rights,  subject  to  the  fulfillment  of  the  for- 
malities and  conditions  imposed  upon  natives.  No  obligation  of 
domicile  or  establishment  in  the  country,  where  protection  is 
claimed,  can  be  imposed  upon  the  members  of  the  Union. 

ART.  3.  Subjects  or  citizens  of  countries,  not  forming  part  of 
the  Union,  who  are  domiciled  or  have  effective  or  bona  fide 
industrial  or  commercial  establishments  within  the  territory  of 
one  of  the  countries  of  the  Union,  shall  be  assimilated  to  the 
subjects  or  citizens  of  the  contracting  countries. 

ART.  4.  (A)  Any  person  who  has  duly  filed  an  application 
for  a  patent  of  invention,  an  utility  model,  an  industrial  design 
or  model,  a  trade  or  commercial  mark  in  one  of  the  contracting 
countries,  or  his  legal  assign  shall  enjoy,  for  filing  the  applica- 
tion in  other  countries  and  reserving  the  rights  of  third  parties, 
a  right  of  priority  during  the  terms  hereinafter  stated. 

(B)  Consequently,  a   subsequent  application  in   one   of  the 
other  countries  of  the  Union  before  the  expiration  of  these  terms 
shall  not  be  invalidated  through  any  acts  accomplished  in  the 
interval,  either,  for  instance,  by  another  application,  by  publica- 
tion of  the  invention  or  by  the  working  thereof  by  a  third  party, 
by  the  sale  of  copies  of  the  design  or  model,  or  by  the  use  of 
the  mark. 

(C)  The  above-mentioned  term  of  priority  shall  be  twelve 
months   for  patents  of  invention  and  utility  models,  and   four 
months   for  industrial   designs   and  models   and   for   trade   and 
commercial  marks. 

fD)  Whoever  shall  wish  to  take  advantage  of  the  priority  of 
a  previous  application  shall  be  obliged  to  file  a  declaration  stating 
the  date  and  the  country  of  such  application.  Each  country  shall 
determine,  at  what  time,  at  the  latest,  such  declaration  must  be 
filed.  Said  statements  shall  be  made  mention  of  in  the  publica- 
tions, issued  by  the  competent  authorities,  especially  in  the  Letters 
Patent  and  the  corresponding  descriptions.  The  contracting 
countries  may  demand  from  the  party,  who  makes  the  declaration 
of  priority,  the  exhibit  of  a  copy  of  the  former  application  (de- 
scription, drawings,  etc.),  legally  certified  to  by  the  authorities 
which  received  the  same.  This  copy  shall  be  exempt  from  all 
authentication.  It  may  be  demanded  that  the  same  be  accom- 
panied by  a  certification  of  the  date  of  application,  issued  by 
these  authorities,  and  by  a  translation.  No  other  formalities 
shall  be  required  for  the  declaration  of  priority  at  the  time  when 
the  application  is  filed.  Each  of  the  contracting  countries  shall 


678  INTERNATIONAL  UNION 

determine  the  consequences  following  the  omission  of  the  for- 
malities, prescribed  by  this  article,  but  such  consequences  may 
not  exceed  the  loss  of  the  right  of  priority. 

(E)     Later  on  other  proofs  may  be  required, 

ART.  4  bis.  Patents  applied  for  in  the  different  contracting 
countries  by  persons  admitted  to  the  benefits  of  the  Convention 
in  terms  of  Articles  2  and  3  shall  be  independent  of  patents  ob- 
tained for  the  same  invention  in  other  countries,  whether  or  not 
they  are  adherents  of  the  Union. 

This  provision  must  be  understood  absolutely,  especially  in  the 
sense  that  the  patents  applied  for  during  the  term  of  priority 
are  independent,  with  regard  to  nullity  and  forfeiture  proceed- 
ings as  well  as  with  regard  to  their  natural  duration. 

It  shall  apply  to  all  patents  in  existence  at  the  date  when  it 
comes  in  force. 

It  shall  also  apply  in  the  case  of  the  accession  of  new  countries, 
to  patents  in  existence  on  either  side  at  the  moment  of  accession. 

ART.  5.  The  introduction  by  the  patentee  into  the  country 
where  the  patent  has  been  issued  of  objects  manufactured  in  any 
of  the  countries  of  the  Union  shall  not  entail  forfeiture. 

Nevertheless,  the  patentee  shall  remain  subject  to  the  obliga- 
tion to  work  his  patent  in  conformity  with  the  law  of  the  country 
into  which  he  introduces  the  patented  objects,  but  with  the  re- 
striction that  annulment  shall  be  pronounced  against  a  patent  in 
any  country  by  reason  of  non-working  only  after  a  lapse  of  three 
years  dating  from  the  application,  in  the  said  country  and  only 
in  case  the  patentee  cannot  justify  the  causes  of  his  inaction. 

ART.  6.  Every  mark  of  manufacture  or  commerce  duly  reg- 
istered in  the  country  of  origin  shall  be  admitted  to  registration 
and  protected  sycji  as  it  is  in  the  other  countries  of  the  Union. 

However,  the  following  may  be  rejected  or  cancelled: 

(1)  Marks  which  are  of  such  nature  that  they  infringe  the 
rights   of  others,   acquired  in  the  country  where  protection  is 
demanded. 

(2)  Marks,  devoid  of  all  distinctive  character  or  composed 
exclusively  of  signs  -or  indications,  which  serve,  in  the  trade,  to 
distinguish  the  species,  quality,  quantity,  destination,  value,  place 
of  origin  of  the  products  or  the  epoch  of  production,  or  having 
become  common  in  current  language  or  old  and  constant  customs 
in  the  commerce  of  the  country  where  protection  is  demanded. 

In  the  valuation  of  the  distinctive  character  of  a  mark,  account 
must  be  taken  of  all  existing  circumstances,  especially  of  the 
duration  of  the  mark. 

(3)  Marks  that  are  contrary  to  good  morals  or  public  order. 
As  the  country  of  origin  shall  be  considered  the  country  in  which 
the  applicant  has  his  principal  establishment. 

If  this  principal  establishment  is  not  situated  in  one  of  the 


INTERNATIONAL  UNION  679 

countries  of  the  Union,  the  country  to  which  the  applicant  be- 
longs shall  be  deemed  to  be  the  country  of  origin. 

The  nature  of  the  goods  on  which  the  mark  of  manufacture  or 
commerce  is  to  be  used,  can  in  no  case  be  an  obstacle  to  the 
registration  of  the  mark. 

The  contracting  countries  agree  to  admit  to  registration  and 
to  protect  the  marks  belonging  to  associations,  the  existence  of 
which  is  not  contrary  to  the  law  of  the  country  of  origin,  even 
when  such  associations  do  not  possess  an  industrial  or  commercial 
establishment. 

However,  each  country  shall  be  the  judge  of  the  particular 
conditions  under  which  an  association  shall  be  admitted  to  a 
protection  of  its  marks.  (Art.  7.) 

A  commercial  name  shall  be  protected  in  all  the  countries  of 
the  Union,  without  the  necessity  of  registration,  whether  or  not 
it  forms  part  of  a  trade  or  commercial  mark.  (Art.  8.) 

All  goods  bearing  illegally  a  mark  of  manufacture  or  com- 
merce or  a  commercial  name  shall  be  seized  on  importation  into 
those  countries  of  the  Union  where  this  mark  or  trade  name  has 
a  right  to  legal  protection. 

When  the  law  of  a  country  does  not  permit  seizure  on  impor- 
tation, the  seizure  shall  be  replaced  by  the  prohibition  of  impor- 
tation. 

The  seizure  shall  be  effected  in  the  country  where  the  illegal 
apposition  shall  take  place  as  well  as  in  the  country  into  which 
the  product  is  imported. 

The  seizure  shall  be  effected  at  the  request  of  either  the  public 
prosecutor  or  of  the  interested  party,  in  conformity  with  the 
domestic  legislation  of  each  country. 

The  authorities  are  not  bound  to  effect  the  seizure  in  case  of 
transit. 

If  the  law  of  a  country  permits  neither  the  seizure  on  impor- 
tation, nor  the  prohibition  of  importation,  nor  the  seizure  in  the 
interior,  these  measures  are  replaced  by  the  actions  and  remedies 
which  the  law  of  that  country  shall  grant  in  similar  cases  to 
natives.  (Art.  9.) 

The  provisions  of  the  preceding  article  shall  apply  to  all  goods 
falsely  bearing  the  name  of  any  locality  as  indication  of  their 
place  of  origin,  when  such  indication  is  associated  with  a  trade 
name,  either  fictitious  or  assumed,  with  fraudulent  intent. 

Any  producer,  manufacturer  or  merchant,  engaged  in  the  pro- 
duction, manufacture  or  sale  of  such  product  and  established 
either  in  the  locality  falsely  designated  as  the  place  of  origin,  or 
in  the  region  where  such  locality  is  situated,  shall  be  deemed  an 
interested  party. 


68o  INTERNATIONAL  UNION 

All  the  contracting  countries  agree  to  assure  to  the  adherents 
of  the  Union  an  effective  protection  against  unfair  competition. 
(Art.  10.) 

The  contracting  countries  shall  grant,  in  conformity  with  their 
interior  laws,  a  temporary  protection  to  marks  of  manufacture 
or  commerce,  for  articles  exhibited  at  international  exhibitions, 
either  official  or  officially  recognized,  organized  on  the  territory 
of  same.  (Art.  11.) 

Each  of  the  contracting  countries  agrees  to  establish  a  special 
department  for  Industrial  Property  and  a  central  office  for  the 
communication  to  the  public  of  marks  of  manufacture  or  com- 
merce. 

This  office  shall  publish  as  far  as  possible  an  official  periodical 
paper.  (Art.  12.) 

The  International  Office  organized  at  Berne  under  the  name  of 
the  "Bureau  International  pour  la  Protection  de  la  Propriete  In- 
dustrielle"  is  placed  under  the  High  Authority  of  the  Government 
of  the  Swiss  Confederation  which  shall  regulate  its  organization 
and  supervise  its  work. 

The  International  Office  will  centralize  information  of  every 
kind  relating  to  the  Protection  of  Industrial  Property  and  will 
collect  it  in  the  form  of  general  statistics,  which  shall  be  dis- 
tributed to  all  the  Administrations.  It  will  interest  itself  in  all 
matters  of  common  utility  to  the  Union  and  will  edit,  with  the 
help  of  the  documents  placed  at  its  disposal  by  the  various  Ad- 
ministrations, a  periodical  paper  in  the  French  language  on  the 
questions  regarding  the  object  of  the  Union. 

The  numbers  of  this  paper,  as  well  as  all  the  documents  pub- 
lished by  the  International  Bureau,  shall  be  distributed  among  the 
Administrations  of  the  countries  of  the  Union  in  the  proportion 
of  the  number  of  contributing  units  mentioned  below.  The  ad- 
ditional copies  and  documents  which  may  be  desired  either  by 
said  Administrations  or  by  societies  or  private  persons,  shall  be 
paid,  for  separately. 

The  International  Office  shall  at  all  times  hold  itself  at  the 
service  of  the  members  of  the  Union  in  order  to  supply  them  with 
any  special  information  they  may  need  on  questions  relating  to 
the  international  service  of  Industrial  Property.  It  shall  furnish 
an  annual  Report  upon  its  administration,  which  shall  be  com- 
municated to  all  the  members  of  the  Union. 

The  expenses  of  the  International  Office  shall  be  borne  in  com- 
mon by  all  the  contracting  countries.  They  must  not,  in  any 
event,  exceed  the  sum  of  sixty  thousand  francs  a  year. 

To  determine  the  part  to  be  contributed  by  each  of  the  coun- 
tries to  said  total  amount  of  expenses,  the  contracting  countries 
and  those  who  may  later  on  join  the  Union,  shall  be  divided  in 


INTERNATIONAL  UNION  681 

six  classes,  each  contributing  in  the  proportion  of  a  certain  num- 
ber of  units,  namely : 

1st  class 25  units 

2nd    "    20     " 

3rd    "    .15     " 

4th     "    10     " 

5th     "    5     " 

6th    "    3 

These  co-efficients  shall  be  multiplied  by  the  number  of  coun- 
tries of  each  class,  and  the  sum  ot  the  products  thus  obtained 
will  furnish  the  number  of  units  by  which  the  total  expense  must 
be  divided.  The  quotient  will  give  the  amount  of  the  unit  of 
expense. 

Each  of  the  contracting  countries  shall  designate,  at  the  time 
of  joining,  the  class  in  which  it  desires  to  rank.  The  Govern- 
ment of  the  Swiss  Confederation  shall  supervise  the  expenses  of 
the  International  Office,  advance  the  necessary  funds  and  render 
an  annual  statement,  which  shall  be  communicated  to  all  the  other 
Administrations.  (Art.  13.) 

The  present  convention  shall  be  submitted  to  periodical  revi- 
sions with  a  view  of  introducing  improvements  calculated  to  per- 
fect the  system  of  the  Union. 

To  this  end  Conferences  shall  be  held  successively  in  one  of 
the  contracting  countries  by  Delegates  of  said  countries. 

The  government  of  the  country  in  which  the  conference  is  to 
be  held,  shall,  with  the  assistance  of  the  International  Office,  pre- 
pare the  transactions  of  that  conference. 

The  Director  of  the  International  Office  shall  be  present  at  the 
sittings  of  the  Conference  and  shall  take  part  in  the  discussions, 
without  the  privilege  of  voting. 

ART.  15.  It  is  understood  that  the  contracting  countries  re- 
spectively reserve  to  themselves  the  right  to  make  separately, 
with  each  other,  special  arrangements  for  the  Protection  of  In- 
dustrial Property,  so  long  as  such  arrangements  do  not  contra- 
vene the  provisions  of  the  present  Convention. 

ART.  16.  The  countries  that  have  not  taken  part  in  the  present 
Convention  shall  be  permitted  to  adhere  at  their  request. 

Such  adhesion  shall  be  notified  through  the  diplomatic  channel 
to  the  Government  of  the  Swiss  Confederation,  and  by  the  latter 
to  all  others. 

It  shall  entail  complete  accession  to  all  the  clauses  and  admis- 
sion to  all  the  advantages,  stipulated  by  the  present  Convention, 
and  shall  take  effect  one  month  after  the  sending  of  the  notifica- 
tion by  the  Government  of  the  Swiss  Confederation  to  the  other 
countries  of  the  Union,  unless  a  later  date  is  indicated  by  the 
adhering  country. 


682  INTERNATIONAL  UNION 

ART.  16  bis.  The  contracting  countries  shall  have  the  right 
to  accede  at  any  time  to  the  present  Convention  for  their  Colo- 
nies, possessions,  dependencies  and  protectorates  or  for  some  of 
them.  To  this  effect,  they  can  either  make  a  general  declaration, 
by  which  all  their  colonies,  possessions,  dependencies  or  pro- 
tectorates take  part  in  the  accession,  or  they  can  name  expressly 
those  that  are  included  or  limit  themselves  to  the  indication  of 
those  that  are  excluded.  This  declaration  is  notified  in  writing 
to  the  Government  of  the  Swiss  Confederation  and  by  the  latter 
to  all  the  other  contracting  countries.  They  shall  have  the  right 
to  denounce  under  the  same  conditions  the  Convention  for  their 
colonies,  possessions,  dependencies  and  protectorates  or  for  some 
of  them. 

ART.  17.  The  execution  of  the  reciprocal  engagements  con- 
tained in  the  present  Convention  is  subordinated,  in  so  far  as 
necessary,  to  the  observance  of  the  formalities  and  rules  estab- 
lished by  the  constitutional  laws  of  those  of  the  contracting  coun- 
tries who  are  bound  to  procure  the  application  of  the  same,  which 
they  agree  to  do  within  as  short  a  time  as  possible. 

ART.  17.  bis:  The  present  convention  shall  remain  in  force 
for  an  unlimited  time,  till  the  expiration  of  one  year  from  the 
dav  on  which  its  denunciation  is  made. 

Such  denunciation  shall  be  addressed  to  the  Government  of  the 
Swiss  Confederation.  It  shall  only  affect  the  country  making 
the  same,  the  Convention  remaining  effective  with  regard  to  the 
other  contracting  countries. 

ART.  18.  The  present  Act  shall  be  ratified  and  the  ratifica- 
tions shall  be  deposited  at  Washington  not  later  than  April  1, 
1913.  It  shall  come  into  operation  among  the  countries  who  have 
ratified  the  same,  at  the  expiration  of  one  month  from  that  date. 

This  Act  and  its  Final  Protocol  shall  supersede  in  the  relations 
of  the  countries  who  shall  have  ratified  the  same,  the  Conven- 
tion of  Paris  of  March  20,  1883,  the  Final  Protocol,  annexed  to 
said  Act,  the  Protocol  of  Madrid  of  April  15th,  1891,  concerning 
the  endowment  of  the  International  Office  and  the  Additional 
Act  of  Brussels  of  December  14,  1910. 

The  above  Acts  will,  however,  remain  in  force  in  the  relations 
of  the  countries  who  shall  not  ratify  the  present  Act. 

ART.  19.  One  signed  copy  of  this  Act  shall  be  deposited  in 
the  Archives  of  the  Government  of  the  United  States.  A  certi- 
fied copy  shall  be  sent  by  the  latter  to  all  the  Governments  of 
the  Union. 

Done  at  Washington  in  a  single  copy  June  2,  1911. 


FINAL  PROTOCOL 

Before  the  signing  of  the  Act,  concluded  on  this  date,  the 
undersigned  Plenipotentiaries  have  agreed  as  follows: 


INTERNATIONAL  UNION  683 

AD.  ART.  1. — The  words  "Industrial  Property"  shall  be  under- 
stood in  the  broadest  sense;  they  shall  apply  to  all  products  of 
the  agricultural  domain  (wine,  grain,  fruit,  animals,  etc.)  and 
extractives  (minerals,  mineral  waters,  etc.). 

AD.  ART.  2. — 

(a)  Under  the  name  "patents  of  invention"  are  understood 
the  various  kinds  of  industrial  patents,  recognized  by  the  laws 
of  the  contracting  countries,  such  as  patents  of  importations, 
patents  of  improvement,  etc.,  for  processes  as  well  as  for  prod- 
ucts. 

(&)  It  is  understood  that  the  provision  of  Article  2,  which 
absolves  the  adherents  of  the  Union  from  the  obligation  of 
domicile  and  establishment,  has  a  constructive  character,  and, 
in  consequence,  must  apply  to  all  rights  created  by  virtue  of  the 
Convention  of  March  20,  1883,  before  the  present  Act  is  put  in 
force. 

(c)  It  is  understood  that  the  provisions  of  Article  2  do  not 
affect  the  legislation  of  each  of  the  contracting  countries  with 
regard  to  the  procedure  to  be  followed  before  the  Tribunals  and 
the  competency  of  the  Tribunals  as  well  as  the  election  of  domi- 
cile or  the  appointment  of  a  representative,  required  by  the  laws 
on  patents,  utility  models,  marks,  etc. 

AD.  ART.  4. — It  is  understood  that,  when  an  industrial  design 
or  model  shall  be  filed  in  a  country  under  a  right  of  priority, 
based  upon  the  filing  of  a  utility  model,  the  term  of  priority  shall 
be  but  that  stipulated  by  Article  4  for  industrial  designs  and 
models. 

AD.  ART.  6. — It  is  understood  that  the  provision  of  the  first 
paragraph  of  Article  6  does  not  exclude  the  right  to  demand 
from  the  applicant  a  regular  certificate  of  registration  in  the 
country  of  origin,  issued  by  the  competent  authority. 

It  is  understood  that  the  use  of  public  coats-of-arms,  badges 
or  decorations,  which  have  not  been  authorized  by  the  competent 
authorities,  or  the  use  of  official  signs  or  stamps  of  control  and 
guarantee,  adopted  by  a  Union  country,  may  be  considered  as 
against  public  order,  in  the  meaning  of  No.  3  of  Art.  6. 

However,  marks  which  contain  reproductions  of  public  coats- 
of-arms,  decorations  or  badges,  with  the  consent  of  the  compe- 
tent authorities,  shall  not  be  considered  as  against  public  order. 

It  is  understood  that  a  mark  shall  not  be  considered  as  against 
public  order  for  the  sole  reason  that  the  same  does  not  conform 
to  any  one  provision  of  the  law  on  marks,  except  when  such 
provision  itself  deals  with  public  order. 


INDEX 


PAGE 

Argentine  Republic   7-29 

Australian  Commonwealth  ..29-45 

Austria   45-60 

Bahama  Islands 60-66 

Barbados .66-68 

Belgium    68-78 

Bermuda    78-83 

Bolivia    83-87 

Brazil    87-93 

British  Guiana 93-94 

British  Honduras   94-96 

British  North  Borneo 96-98 

Bulgaria    98-106 

Canada   106-115 

Cape  Province   115-121 

Central  Africa  Protec- 
torate     121-122 

Ceylon    122-126 

Channel  Islands   126 

Chile   126-129 

China    130-135 

Colombia   135-137 

Congo  Free  State 138-140 

Consular  Courts   618-620 

Convention  of  American 

States    664-676 

Costa  Rica 140-142 

Crete 142-145 

Cuba   145-151 

Curacao  or   Dutch   West   In- 
dies     152-153 

Cyprus    153-157 

Danish  West  Indies 157-158 

Denmark    .  ..158-169 


PAGE 
Dominican  Republic  or  Santo 

Domingo  169-172 

Dutch  East  Indies 172-174 

East  Africa  Protectorate 175 

Ecuador  175-179 

Egypt  179-181 

Eritrea  181-184 

Falkland  Islands  184-185 

False  Indication  of  Origin. 602-618 

Fiji  Islands 185-186 

Finland  186-188 

First  Applicant 599 

France  188-205 

Gambia  206 

Germany  207-225 

Gibraltar  225-226 

Gold  Coast  Colony 226-227 

Great  Britain  227-247 

Greece  247-251 

Grenada  251-252 

Guatemala  252-256 

Hawaii  256-257 

Honduras  257-259 

Hong  Kong  259-266 

Hungary  266-274 

Iceland  274-275 

India  275-278 

International  Union  648-664 

See  also  676-683 

Italy  278-287 

Jamaica  287-294 

Japan  294-312 

Leeward  Islands  312-315 

Liberia  .  ..315-316 


684 


INDEX 


685 


PAGE 

Luxembourg 316-318 

Malta  and  Gozo   318-322 

Marking  Trademarks 599-602 

Mauritius    323-327 

Merchandise   Marks  Act.. 621-630 

Mexico   327-341 

Montenegro    341-342 

Morocco 342 

Natal     342-345 

Netherlands    345-355 

Newfoundland    355-357 

New  Zealand   358-373 

Nicaragua    373-379 

Northern  Nigeria   379-380 

Norway    380-388 

Oman    388-389 

Orange  River  Colony 389-391 

Panama    391-397 

Paraguay   397-400 

Peru    400-412 

Philippine   Islands    412-419 

Porto  Rico   419-422 

Portugal    423-433 

Portuguese  Colonies   433-437 

Priority  of  Use  598-599 

Red  Cross  620-621 

Requirements   585-598 


PAGE 

Rhodesia    437-441 

Roumania    441-448 

Russia    448-454 

Salvador    454-460 

Servia    460-463 

Seychelles    463-464 

Siam    464-465 

Southern   Nigeria    465-468 

Spain     468-485 

St.  Helena  485-486 

St.  Lucia   486-487 

St.  Vincent  487-488 

Straits  Settlements   488-489 

Sudan   489 

Surinam   490-491 

Sweden     491-495 

Switzerland  496-506 

Transvaal     506-511 

Trinidad  and  Tobago 511-513 

Tunis    513-516 

Turkey   516-522 

Unfair  Trade   630-648 

United  States  of  America. 522-562 

Uruguay    563-578 

Venezuela    579-583 

Zanzibar    .  ..583-584 


ESTABLISHED  1885 


BERTHOLD  SINGER  B.  ALEXANDER  SINGER 

E.  A.  SINGER  M.  H.  EHLERT 


B.   SINGER 


NATIONAL  LIFE  BUILDING,  CHICAGO 
30  CHURCH  STREET,  NEW  YORK  CITY 
VICTOR  BUILDING,  WASHINGTON,  D.  C. 
17  NEUENBURGER  STRASSE,  BERLIN 


PATENTS,  TRADE  MARKS, 
DESIGNS  AND  COPYRIGHTS 

Business  Transacted  Exclusively  for  Attorneys 

No  Business  Accepted  from  Inventors 

or  Manufacturers  Direct 

Agents  and  Correspondents  in  Every  Country 
Granting  Patents,  Trade  Marks,   De- 
signs or  Copyright  Protection 


B.   SINGER 

*  Author  of  the  following  works : 

'Patents,   Trade  Marks,   Designs   and  Copyrights" 
"Copyright  Laws  of  the  World" 


'Patent  and  Trade   Mark   Laws  of  the  World" 


SINGER 

on 
TRADE  MARKS 


Foreign  Collections  and   Inheritances.     Preparing   Documents  in  all 
Foreign  Languages.     Consular  Legalizations. 

M.    H.    EHLERT  BERTHOLD   SINGER 

CONSUL  CONSUL 


LAW  LIBRARY 

OF  CALIFORNIA 

LOS  ANGELES 


A     000  949  880     9 


